Invalidity Opinions in Patent Litigation: Shielding Against Liability
Reducing Exposure to Enhanced Damages, Attorney-Client Privilege Implications
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will provide patent counsel with guidance on using invalidity opinions in defense of patent infringement claims. The panel will discuss the issue of waiver of the attorney-client privilege and other factors when considering invalidity opinions. The panel will provide best practices for obtaining and using invalidity opinions.
Outline
- Use of invalidity opinions
- Drafting invalidity opinions
- Key considerations
- Privilege implications
- Recent cases
- Best practices for obtaining and using invalidity opinions
- Timing
- Triggers
- Attorney-client privilege
Benefits
The panel will review these and other noteworthy issues:
- What are the benefits of obtaining invalidity opinions? What are the risks?
- How have courts addressed invalidity defenses?
- Under what circumstances should invalidity opinions be sought to protect from infringement claims and enhanced damages?
Faculty
Anthony D. Del Monaco
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Del Monaco focuses his practice on patent litigation. His experience ranges from consulting with clients regarding... | Read More
Mr. Del Monaco focuses his practice on patent litigation. His experience ranges from consulting with clients regarding litigation strategy and preparation of all aspects of client’s complaint; conducting depositions of fact, Rule 30(b)(6), and experts on technical and non-technical issues; preparing fact and expert witnesses for direct- and cross-examination at trial; and performing direct- and cross-examinations of witnesses at trial. He also advises on patent matters, including opinions of counsel. He has experience working with a broad range of technologies, including mechanical, electrical, business methods, and medical devices.
Close
Charles F. O'Brien
Partner; Chair of the IP Transaction Practice
Cantor Colburn
Mr. O'Brien concentrates his transactional practice on the exploitation, transfer and licensing of technology. He... | Read More
Mr. O'Brien concentrates his transactional practice on the exploitation, transfer and licensing of technology. He has extensive experience in all aspects of complex IP licensing, including the preparation and negotiation of patent license agreements, software license agreements, joint development agreements, trademark license agreements, material transfer agreements, joint marketing and promotion agreements, and the like. Mr. O'Brien is also a member of the firm’s Litigation Department and has extensive experience in litigating IP related actions, including patent infringement actions and contractual disputes regarding IP rights. These skills provide him with useful and sometimes critical insight for his clients into issues and conflicts that can arise in IP transactional matters. This allows him to address these potential issues and conflicts early on at the transactional stage.
Close
April E. Weisbruch
Partner
McDermott Will & Emery
Ms. Weisbruch focuses her practice on intellectual property matters, particularly in managing large-scale IP litigation... | Read More
Ms. Weisbruch focuses her practice on intellectual property matters, particularly in managing large-scale IP litigation and counseling. She works with clients in wide-ranging technology sectors, including pharmaceuticals, software applications, medical devices, organic chemistry, and ballistics. She represents clients in all phases of patent litigation, from the filing of a complaint through appeal, as well as in the highly specialized post-grant proceedings before the United States Patent Trial and Appeal Board (PTAB). She has extensive deposition, hearing, and trial experience in US district courts throughout the country and the US Court of Federal Claims, the US Court of Appeals for the Federal Circuit, and the PTAB. Her litigation experience includes traditional "competitor" litigation, litigation against non-practicing entities, ANDA litigation under the Hatch-Waxman Act, and Sec. 1498 litigation against the United States of America.
Close