Patent Infringement Claims Post-Qualcomm: Reassessing the Need for Opinion Letters

Balancing Opinions of Counsel Benefits Against Attorney–Client Privilege Risks

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Thursday, December 11, 2008

Course Materials


Opinions of counsel have traditionally been the standard first line of defense to avoid a willful infringement claim. However, asserting that defense puts attorney advice at issue and could result in waiver of the attorney–client privilege.

The Federal Circuit’s 2007 ruling in In re Seagate suggested a change of course on how companies should defend patent infringement claims and seemed to downplay the importance of opinion letters in willful infringement cases.

The court’s September 24 ruling Qualcomm v. Broadcom has put life back into the use of opinion letters. Qualcomm held, in deciding whether a company induced infringement, a jury should consider evidence that the company did not get an opinion letter from outside counsel.

Listen as our authoritative panel of intellectual property attorneys examines the standard for willful infringement and the use of opinion letters, waiver of the attorney–client privilege, and best practices for using opinions of counsel.



  1. Standard for willful infringement and use of opinions of counsel
    1. In re Seagate (Fed. Cir. 2007) and the objective recklessness standard
    2. Qualcomm v. Broadcom
    3. Importance of competent opinion of counsel in defending willful infringement allegations
    4. Reliance on opinions of counsel
    5. Updating opinions
    6. Changes in how opinions are used
  2. Court treatment
    1. Qualcomm v. Broadcom
    2. How the courts are applying Seagate
  3. Waiver
    1. Scope of discovery
    2. Privilege waiver for opinion counsel and trial counsel
    3. Privilege waiver for in-house counsel
    4. Other in-house personnel and in-house investigations
    5. Waiver of work product immunity
  4. Best practices post-Qualcomm and Seagate
    1. Implications for opinion of counsel practice
    2. Rethinking defending against willfulness claims
    3. No affirmative duty to get opinion, but proceed with caution if monitoring others’ patents
    4. When should corporate counsel now seek outside opinions to protect themselves from willful infringement claims?
    5. Cost-benefit analysis (cost of single opinion v. amount at stake in patent lawsuit)


The panel will review these and other key questions:

  • How has the Federal Circuit's Qualcomm ruling impacted the use of opinion letters?
  • How can counsel reconcile the seemingly contradictory decisions in Seagate and Qualcomm?
  • What are the best practices for IP owners and their counsel in determining whether to use opinion letters?


Mark P. Wine
Mark P. Wine
Orrick Herrington & Sutcliffe

He has extensive experience in all aspects of intellectual property litigation in a broad spectrum of business and...  |  Read More

Sanford E. Warren, Jr.
Sanford E. Warren, Jr.

Akin Gump Strauss Hauer & Feld

He practices intellectual property litigation, including successful defense of patent infringement suits, in the...  |  Read More

John P. Hanish
John P. Hanish
Goodwin Procter

He focuses on patent litigation, including significant work on patent infringement cases, patent licensing, and...  |  Read More

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