Advice of Counsel Defense in Patent Litigation and Protecting Attorney-Client Privilege
Limiting Scope of Discovery, Safeguarding Confidential Communications and Information
Recording of a 90-minute CLE webinar with Q&A
This CLE webinar will provide patent counsel with an examination of the role of the advice of counsel defense in patent infringement cases in the aftermath of Halo, and the temporal and subject matter scope of the potential waiver of the attorney-client privilege and work product protection when an accused infringer relies upon such a willfulness defense. The panel will also discuss recent decisions and offer guidance to counsel and companies for protecting privileged communications and attorney work product when relying upon an advice of counsel defense.
- Privilege in the context of opinions of counsel and the use of the advice of counsel defense
- Recent decisions and guidance for trial counsel
- Best practices
- Limiting the scope of discovery of communications and work product
- Protecting the privilege
The panel will review these and other high priority issues:
- What is the practical impact of recent Supreme Court and federal court decisions on utilizing opinions of counsel in defense of willful infringement while protecting privileged communications and attorney work product?
- What considerations regarding possible waiver of the attorney-client privilege and work product immunity should counsel consider before asserting the advice of counsel defense in patent infringement litigation?
- What are the best practices for counsel and corporations to preserve the attorney-client privilege and work product immunity?
Krupa K. Parikh
Latham & Watkins
Ms. Parikh is a member of the firm’s Intellectual Property Group. She focuses her practice on Hatch-Waxman... | Read More
Ms. Parikh is a member of the firm’s Intellectual Property Group. She focuses her practice on Hatch-Waxman matters, inter partes review proceedings and patent prosecution matters in a wide range of technologies. Ms. Parikh is an editor for the firm’s Big Molecule Watch blog covering news and providing analysis in the biosimilars space. She also contributes to the firm's Digital Currency Perspectives blog, which chronicles industry news, including regulatory developments and other issues affecting clients and the digital currency industry.Close
April E. Weisbruch
Sheppard Mullin Richter & Hampton
Ms. Weisbruch focuses on all aspects of intellectual property, including patent prosecution and patent litigation. Her... | Read More
Ms. Weisbruch focuses on all aspects of intellectual property, including patent prosecution and patent litigation. Her focus on “full spectrum IP work,” which also includes complex opinion work drafting freedom-to-operate (FTO) and invalidity opinions, allows her to counsel clients at all stages in the IP portfolio development. She represents clients in all phases of patent litigation and also represents clients in post-grant proceedings before the PTAB. She has experience with all aspects of patent prosecution, including drafting and prosecuting patent and trademark applications, examiner interviews, petitions and appeals.Close
Eleanor M. Yost
Carlton Fields Jorden Burt
Ms. Yost represents clients in a broad range of intellectual property matters, including patent and trademark, appeals,... | Read More
Ms. Yost represents clients in a broad range of intellectual property matters, including patent and trademark, appeals, opinions, licensing and transactions. She also litigates high-stakes intellectual property disputes in state and federal courts, the U.S. International Trade Commission (ITC) and the USPTO prosecution. Ms. Yost is the lead author of PTAB Post Grant Proceedings: A Tactical Guide for Practitioners and serves on the Board of Directors of the PTAB Bar Association.Close