Patent Infringement: Structuring Opinions of Counsel

Leveraging Opinion Letters to Reduce the Risks of Liability and Enhanced Damages

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


Conducted on Wednesday, March 28, 2018

Recorded event now available

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Program Materials

This CLE webinar will provide patent counsel with an analysis of the evolving role of attorney opinions in the defense of patent infringement claims and the potential use of written opinions of counsel. The panel will discuss the issue of waiver of the attorney-client privilege and provide best practices for developing opinions of counsel.

Description

The role of opinions of counsel as a defense to willful patent infringement claims was altered significantly by the Supreme Court’s decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923 (2016). Following Halo’s guidance, more district courts are allowing juries to consider willfulness allegations. Accordingly, consideration must be given to the fact that asserting the advice of counsel as a defense to willful infringement can result in waiver of privilege.

Liability for induced infringement must be predicated on knowledge of the patent one is alleged to infringe. In Commil USA v. Cisco Systems, the Supreme Court held that a good-faith belief in the invalidity of a patent could not negate the intent for induced infringement, but the role of non-infringement opinions remains an important issue in the defense of induced infringement claims. In this context, opinions of counsel can further provide valuable advice and suggestions for design-around options to reduce the risk of infringement.

Listen as our authoritative panel of patent attorneys examines the evolving standard for patent infringement claims and the use of opinions of counsel. The panel will discuss the issue of waiver of the privilege and provide best practices for employing opinions of counsel.

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Outline

  1. Willful infringement, inducement of infringement and use of opinions of counsel
    1. The “totality of the circumstances” standard for determining willfulness
    2. Importance of competent opinion of counsel in defending against willful infringement allegations and induced infringement claims
    3. Reliance on opinions of counsel
    4. Updating opinions
    5. Recent developments and their impact on how opinions should be used
  2. 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
  3. Court treatment
  4. Best practices for employing opinions of counsel
    1. Implications for opinion of counsel practice
    2. Rethinking defending against willfulness claims
    3. While, even under Halo, there is no affirmative duty to get an opinion, how can best prudently proceed if monitoring others’ patents
    4. When should corporate counsel seek outside opinions to protect themselves from willful infringement claims?
    5. Cost-benefit analysis (cost of single opinion vs. amount at stake in patent lawsuit)

Benefits

The panel will review these and other key issues:

  • What is the practical impact of recent decisions on utilizing opinions of counsel in defense of willful infringement and induced infringement claims?
  • How does the “totality of the circumstances” standard impact legal advice on proactive clearance analysis for product planning and strategic portfolio development?
  • Under what circumstances should corporate counsel seek outside opinions of counsel to protect their client from infringement claims?

Faculty

Scott, Thomas
Thomas J. Scott, Jr.

Senior Vice President and General Counsel
Personalized Media Communications

Mr. Scott is responsible for the firm’s legal and licensing activities and staff. He formerly chaired the...  |  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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