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


Conducted on Tuesday, October 2, 2018

Recorded event now available

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Program Materials

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.

Description

The Supreme Court’s decision in Halo Electronics Inc. v. Pulse Electronics Inc., 136 S. Ct. 1923 (2016) significantly changed the standard for establishing a claim of willful patent infringement. Opinions of counsel are a more important factor that courts examine in considering whether to exercise their discretion and award enhanced damages.

What Halo fails to address, however, is the interplay between reliance on an opinion of counsel defense to rebut a charge of willful infringement and the scope of a waiver of the attorney-client privilege and work product immunity.

Since Halo, several federal district courts have addressed the issue of privilege and work product waiver when the advice of counsel defense is asserted. These district courts considered several important issues, including whether advice of counsel waivers: (1) are limited to pre-litigation conduct; (2) can extend to communications between opinion counsel and trial counsel; (3) can extend to communications between inside counsel and outside counsel; and (4) may result in the waiver of privilege concerning collateral issues.

Listen as our authoritative panel of patent attorneys examines the issues of privilege in the context of opinions of counsel and the use of the advice of counsel defense. The panel will review recent decisions and offer best practices for limiting the scope of discovery of communications and work product related to the advice of counsel defense as well as for protecting the privilege.

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Outline

  1. Privilege in the context of opinions of counsel and the use of the advice of counsel defense
  2. Recent decisions and guidance for trial counsel
  3. Best practices
    1. Limiting the scope of discovery of communications and work product
    2. Protecting the privilege

Benefits

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?

Faculty

Parikh, Krupa
Krupa K. Parikh

Atty
Latham & Watkins

Ms. Parikh is a member of the firm’s Intellectual Property Group. She focuses her practice on Hatch-Waxman...  |  Read More

Weisbruch, April
April E. Weisbruch

Atty
Sheppard Mullin Richter & Hampton

Ms. Weisbruch focuses on all aspects of intellectual property, including patent prosecution and patent litigation. Her...  |  Read More

Yost, Eleanor
Eleanor M. Yost

Shareholder
Carlton Fields Jorden Burt

Ms. Yost represents clients in a broad range of intellectual property matters, including patent and trademark, appeals,...  |  Read More

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