Advice of Counsel Defense in Patent Litigation: 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 Thursday, March 16, 2017

Recorded event now available

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Program Materials

This CLE webinar will provide patent counsel with an examination of the role of 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 the Krausz decision 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) has significantly changed the standard for establishing a claim of willful patent infringement. In the aftermath of Halo, opinions of counsel may become 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 waiver of the attorney-client privilege and work product immunity.

A federal district court recently issued an opinion post-Halo on the issue of privilege and work product waiver when the advice of counsel defense is asserted. The district court considered whether advice of counsel waivers should be limited to pre-litigation because Halo focused on pre-litigation conduct. The court rejected this argument, concluding that “[i]n light of the appropriate scope of the court’s inquiry on the question of enhanced damages, there is no reason to restrict the temporal scope of the waiver resulting from the assertion of an advice of counsel defense to pre-litigation communications.” Krausz Industries Ltd. v. Smith-Blair Inc. & Sensus USA Inc. (E.D.N.C. Dec. 13, 2016). The district court further found that the waiver extended to communications between opinion counsel and trial counsel.

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 the Halo and Krausz decisions and discuss the guidance they provide to patent counsel. The panel will also 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. Krausz decision and the guidance it provides to patent 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 key 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 a patent infringement litigation?
  • What are the best practices for counsel and corporations to preserve the attorney-client privilege and work product immunity?

Faculty

Michael E. McCabe, Jr.
Michael E. McCabe, Jr.

Member
Funk & Bolton

Mr. McCabe is a registered patent attorney with 20 years of experience representing foreign and domestic entities and...  |  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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