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In In re EchoStar Communications Corp., 448 F.3d 1294 (Fed.
Cir. 2006), defendants to a willful patent infringement suit
asserted the defense of reliance on advice of counsel. The Court
of Appeals ruled:
Work-product waiver extends only so far as to inform
the court of the infringer’s state of mind. * * *
The overarching goal of waiver in such a case is
to prevent a party from using the advice he received as
both a sword, by waiving privilege to favorable advice,
and a shield, by asserting privilege to unfavorable
advice.
Id. at 1303.
We note that, in response to petitioners’ section 7430
motion, respondent refers to the two memoranda and respondent’s
actions under section 6110 resulting in disclosure of the
redacted Hyman memorandum. As we view it, respondent’s
references to the two memoranda are in the course of a recital of
sequence of events. The references are not by way of a
contention that the existence of the two memoranda or the text of
the redacted Hyman memorandum is evidence showing that
respondent’s position was substantially justified, within the
meaning of section 7430(c)(4)(B)(i). Petitioners have not
directed our attention to any attempt by respondent to make a
“testimonial use” of either of the two memoranda (Hartz Mountain
Industries v. Commissioner, 93 T.C. at 528), or to use either of
the two memoranda as “a sword” (In re EchoStar Communications
Corp., 448 F.3d at 1303).
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