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
- Standard for willful infringement and use of opinions of counsel
- In re Seagate (Fed. Cir. 2007) and the objective recklessness standard
- Qualcomm v. Broadcom
- Importance of competent opinion of counsel in defending willful infringement allegations
- Reliance on opinions of counsel
- Updating opinions
- Changes in how opinions are used
- Court treatment
- Qualcomm v. Broadcom
- How the courts are applying Seagate
- Scope of discovery
- Privilege waiver for opinion counsel and trial counsel
- Privilege waiver for in-house counsel
- Other in-house personnel and in-house investigations
- Waiver of work product immunity
- Best practices post-Qualcomm and Seagate
- Implications for opinion of counsel practice
- Rethinking defending against willfulness claims
- No affirmative duty to get opinion, but proceed with caution if monitoring others’ patents
- When should corporate counsel now seek outside opinions to protect themselves from willful infringement claims?
- 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
Orrick Herrington & Sutcliffe
He has extensive experience in all aspects of intellectual property litigation in a broad spectrum of business and... | Read More
He has extensive experience in all aspects of intellectual property litigation in a broad spectrum of business and industry. He has served as Lead Counsel in many patent infringement matters.Close
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
He practices intellectual property litigation, including successful defense of patent infringement suits, in the medical device, electronic, chemical, semiconductor and telecommunications fields. He also manages worldwide trademark portfolios in the aviation, chemical and health fields.Close
John P. Hanish
He focuses on patent litigation, including significant work on patent infringement cases, patent licensing, and... | Read More
He focuses on patent litigation, including significant work on patent infringement cases, patent licensing, and pre-litigation strategies related to patents and trade secrets. He has substantial trial and appellate experience in patent, trade secret and licensing disputes related to pharmaceutical compounds, biotechnology, medical devices, electronics and consumer products.Close
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