Patent Infringement Claims, Opinions of Counsel and Attorney-Client Privilege
Best Practices for Opinion Letters After Seagate and Qualcomm
Recording of a 90-minute CLE webinar/teleconference with Q&A
Conducted on Tuesday, March 9, 2010
Recorded event now available
This CLE webinar will offer guidance to patent attorneys on the best use of opinion of counsel letters in infringement suits in light of the conflicting Seagate and Qualcomm decisions. The panel will also discuss the impact on attorney client privilege when using opinion of counsel letters.
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
- Standard for willful infringement and use of opinions of counsel
- In re Seagate and the objective recklessness standard
- Qualcomm v. Broadcom
- Importance of competent opinion of counsel in defending willful infringement allegations
- Reliance on opinions of counsel
- Updating opinions
- Changes in how opinions are used
- Waiver
- Scope of discovery
- Privilege waiver for opinion counsel and trial counsel
- Privilege waiver for in-house counsel
- Other in-house personnel and in-house investigations
- Waiver of work product immunity
- Court treatment
- Application of Qualcomm v. Broadcom
- Application of Seagate
- Best practices post-Qualcomm and Seagate
- Implications for opinion of counsel practice
- Rethinking defending against willfulness claims
- No affirmative duty to get opinion, but proceed with caution if monitoring others’ patents
- When should corporate counsel now seek outside opinions to protect themselves from willful infringement claims?
- 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?
Faculty
Sanford E. Warren, Jr.,
Partner
Akin Gump Strauss Hauer & Feld, Dallas
He practices intellectual property litigation, including successful defense of patent infringement suits, in the medical device, electronic, chemical, semiconductor and telecommunications fields. He also manages worldwide trademark portfolios in the aviation, chemical and health fields.
Richard S. J. Hung,
Partner
Morrison & Foerster, San Francisco
He focuses on intellectual property litigation and counseling. He has litigated a variety of technology matters and advises clients on strategic patent issues. He also has been involved in trade secrets litigation in state court and in commercial arbitration before the American Arbitration Association.
Mark P. Wine,
Partner
Orrick Herrington & Sutcliffe, Irvine, Calif.
He has extensive experience in all aspects of intellectual property litigation in a broad spectrum of business and industry. He has served as lead counsel in many patent infringement matters. He has represented clients in contested intellectual property matters in many states, before the International Trade Commission (ITC) and in several international jurisdictions.
Ordering
Online CLE - Audio Recording
Includes audio streaming of full program plus handouts (available 24 hours after live seminar).
CLE:
Pre-approved for participatory or non-traditional/alternate format credit in: CA, HI*, NY*, WV*.
Pre-approved for self-study credit in: AK, AZ, MO, MT, TX, VT, WA.
Upon request, also available in: CO, CT*, FL, GA, ID, KY, LA, ME, NC, ND, NE, NH, NM, NV, OR*, SC, TN, UT, WI*, WY. If you are applying for credit in one of these states, make sure to select those states when placing your order.
(*Indicates that Strafford must report attendance.)
Online CLE Audio $297.00
Available 24 hours after the live event
Recorded Event
Includes full event recording plus handouts (available after live seminar).
CLE: Pre-approved for self-study credit in: AK, AZ, CA, CT, HI, MO, MT, NY, TX, VT, WA, WV. Upon request, self-study credit is also available in: CO, FL, GA, ID, KY, ME, ND, NE, NH, NM, NV, OR, UT, WI, WY. If you are applying for self-study credit in one of these states, contact Strafford CLE at 1-800-926-7926 ext. 35 or CLE@straffordpub.com.
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Available three business days after the live event
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plus $9.45 S&H
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