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
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.
- Willful infringement, inducement of infringement and use of opinions of counsel
- The “totality of the circumstances” standard for determining willfulness
- Importance of competent opinion of counsel in defending against willful infringement allegations and induced infringement claims
- Reliance on opinions of counsel
- Updating opinions
- Recent developments and their impact on how opinions should be used
- 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
- Court treatment
- Best practices for employing opinions of counsel
- Implications for opinion of counsel practice
- Rethinking defending against willfulness claims
- While, even under Halo, there is no affirmative duty to get an opinion, how can best prudently proceed if monitoring others’ patents
- When should corporate counsel seek outside opinions to protect themselves from willful infringement claims?
- Cost-benefit analysis (cost of single opinion vs. amount at stake in patent lawsuit)
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?
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
Mr. Scott is responsible for the firm’s legal and licensing activities and staff. He formerly chaired the Intellectual Property Practice Groups at Goodwin Procter and Hunton & Williams. Mr. Scott focuses on all aspects of intellectual property including patent prosecution, litigation and licensing, appellate practice, and technology licensing.Close
April E. Weisbruch
Sheppard Mullin Richter & Hampton
Ms. Weisbruch focuses on all aspects of intellectual property, including patent prosecution and patent litigation. Her... | Read More
Ms. Weisbruch focuses on all aspects of intellectual property, including patent prosecution and patent litigation. Her focus on “full spectrum IP work,” which also includes complex opinion work drafting freedom-to-operate (FTO) and invalidity opinions, allows her to counsel clients at all stages in the IP portfolio development. She represents clients in all phases of patent litigation and also represents clients in post-grant proceedings before the PTAB. She has experience with all aspects of patent prosecution, including drafting and prosecuting patent and trademark applications, examiner interviews, petitions and appeals.Close
Eleanor M. Yost
Carlton Fields Jorden Burt
Ms. Yost represents clients in a broad range of intellectual property matters, including patent and trademark, appeals,... | Read More
Ms. Yost represents clients in a broad range of intellectual property matters, including patent and trademark, appeals, opinions, licensing and transactions. She also litigates high-stakes intellectual property disputes in state and federal courts, the U.S. International Trade Commission (ITC) and the USPTO prosecution. Ms. Yost is the lead author of PTAB Post Grant Proceedings: A Tactical Guide for Practitioners and serves on the Board of Directors of the PTAB Bar Association.Close