Advice of Counsel Defense in Patent Litigation and Protecting Attorney-Client Privilege

Limiting Scope of Discovery, Safeguarding Confidential Communications and Information

A live 90-minute premium CLE video webinar with interactive Q&A


Thursday, September 30, 2021 (in 5 days)

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

or call 1-800-926-7926

This CLE course will provide patent counsel with an examination of the role of the advice of counsel defense in patent infringement cases 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 the 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 when exercising their discretion and award enhanced damages.

What Halo failed 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 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 and 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

Cooper, Monte
Monte Cooper

Senior Attorney
Goodwin Procter

Drawing on strong technical skills and extensive work with engineers, Mr. Cooper blends his fascination with science...  |  Read More

Hadzimehmedovic, Azra
Azra Hadzimehmedovic

Partner
Tensegrity Law Group

Ms. Hadzimehmedovic brings extensive experience litigating complex patent cases in U.S. district courts, the ITC, and...  |  Read More

Lavenue, Lionel
Lionel M. Lavenue

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Lavenue’s practice focuses on patent trial litigation, including 19 bench or jury trials, and on creating and...  |  Read More

Attend on September 30

Cannot Attend September 30?

You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

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