(a) The substance of any advice of counsel tendered in defense to a charge of
willful infringement, and any other information which might be deemed to
be within the scope of a waiver attendant to disclosure of such advice, shall
not be discoverable until the earlier of:
(1) 7 days after a ruling on summary judgment indicating a triable issue
of fact to which willfulness would be relevant; or
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(2) 30 days prior to the close of fact discovery under the Scheduling
Order.
(b) On the day such willfulness information becomes discoverable, the party
relying on such advice shall produce the following:
(1) a copy of all written opinions to be relied on by the party opposing
the claim of infringement;
(2) a copy of all materials or information related to the opinion that were
provided to the attorney in the course of preparation of each such
opinion;
(3) a copy of all written attorney work product related to each such
opinion that (i) was developed in the course of preparation of the
opinion and (ii) was disclosed to the client;
(4) identification of the date, sender and recipient (but not necessarily
the substance) of all written and oral communications between the
party opposing the claim of infringement and the attorney or law
firm rendering any opinions to be relied on, which communications
discuss the same subject matter as such opinion;
(5) any other opinion(s) that discuss the same subject matter as such
opinion and that were provided to the party opposing the claim of
infringement by any other attorney or law firm, whether or not the
party relied on such additional opinions; and
(6) identification of the date, sender and recipient (but not necessarily
the substance) of all written and oral communications between the
party opposing the claim of infringement and the attorney or law
firm rendering such opinions that were not relied on, which
communications discuss the same subject matter as such opinion.
(c) After such willfulness information becomes discoverable, a party claiming
willful infringement shall be entitled (subject to any limitations, including
limitations on numbers of depositions, otherwise imposed by the
Scheduling Order) to take the deposition of any attorneys rendering the
advice relied on and any persons who received such advice, including but
not limited to any person who claims to have relied on such advice.
(d) A party opposing a claim of patent infringement who does not comply with
the requirements of this Local Civil Rule 303.8 shall not be permitted to
rely on an opinion of counsel as part of a defense to willful infringement
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absent a stipulation of all affected parties or by order of the court, which
shall be entered only upon a showing of good cause.
