Patent Infringement Claims, Opinions of Counsel and Attorney-Client Privilege

Description

Opinions of counsel are traditionally a first line of defense in the event of willful patent infringement claims. However, asserting that defense can put the attorney advice at issue and result in waiver of the attorney-client privilege.

While the Federal Circuit’s In re Seagate ruling seemed to downplay the importance of opinion letters in willful infringement cases, its more recent Qualcomm v. Broadcom ruling brought them back to the forefront.

Qualcomm held, in deciding whether a company induced infringement, a jury should consider evidence that the company failed to obtain an opinion letter from outside counsel.

Listen as our authoritative panel of IP attorneys examines the evolving standard for patent infringement claims and the use of opinions of counsel. The panel will discuss the issue of waiver of the attorney-client privilege and provide best practices for employing opinions of counsel post Seagate and Qualcomm.

Outline

1. Standard for willful infringement and use of opinions of counsel
   1. In re Seagate and the objective recklessness standard
   2. Qualcomm v. Broadcom
   3. Importance of competent opinion of counsel in defending willful infringement allegations
   4. Reliance on opinions of counsel
   5. Updating opinions
   6. Changes in how opinions are used
2. Waiver
   1. Scope of discovery
   2. Privilege waiver for opinion counsel and trial counsel
   3. Privilege waiver for in-house counsel
   4. Other in-house personnel and in-house investigations
   5. Waiver of work product immunity
3. Court treatment
   1. Application of Qualcomm v. Broadcom
   2. Application of Seagate
4. Best practices post-Qualcomm and Seagate
   1. Implications for opinion of counsel practice
   2. Rethinking defending against willfulness claims
   3. No affirmative duty to get opinion, but proceed with caution if monitoring others’ patents
   4. When should corporate counsel now seek outside opinions to protect themselves from willful infringement claims?
   5. Cost-benefit analysis

Benefits

The panel will review these and other key questions:

• What is the practical impact of the recent Federal Circuit decisions on utilizing opinions of counsel?
• How does Seagate's "objective recklessness" standard impact legal advice on proactive clearance analysis for product planning and strategic portfolio development?
• How can counsel reconcile the seemingly contradictory decisions in Seagate and Qualcomm?
• Under what circumstances should corporate counsel seek outside opinions of counsel to protect their company from infringement claims?

Webinar/Teleconference

Strafford webinars/teleconferences offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

CLE Credit

Strafford's live seminars qualify for CLE in every state that accredits webinars. They offer you a high quality, cost effective, and convenient CLE option, with no lost travel time or expenses.

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