The Plaintiff filed a motion in limine seeking the district court to preclude the Defendant from offering at trial any testimony regarding the Defendant's opinion of counsel defense that was not disclosed during discovery. As explained by the district court, the Plaintiff also alleged that the Defendant selectively produced certain documents pertaining to the Defendant's opinion of counsel defense and instructed witnesses not to testify on matters concerning the Defendant's investigation into the Plaintiff's allegations of patent infringement and theft of trade secrets.

The district court found that the Plaintiff's motion was vague because it failed to address which documents and opinions were withheld.

The district court then agreed "that the case of In re Echostar Commc'n Corp., 448 F.3d 1294 (Fed. Cir. 2006), establishes the principle that when an accused patent infringer asserts an advice-of-counsel defense regarding willful infringement, it waives its attorney client-privilege and work product immunity for any document or opinion that discusses a communication to it or from it concerning whether the patent is valid."

Nonetheless, the district court found that it would be unfair "to preclude the Defendant from offering at trial evidence of its advice-of-counsel defense simply because the Plaintiff did not obtain information about that defense during discovery. Further, as also noted by the Defendant, the Plaintiff's motion confuses the limitations of the opinion of counsel defense. The defense concerns the issue of patent infringement, not theft of trade secrets."

Accordingly, the district court denied the motion.

Texas Advanced Optoelectronic Solutions, Inc. v. Intersil Corporation, Case No. 4:08-CV-451 (E.D. Tex. Feb. 2015)