Interested in training for your team? Click here to learn more

Patent Infringement: Structuring Opinions of Counsel

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

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

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Thursday, June 9, 2022

Recorded event now available

or call 1-800-926-7926

This CLE course will provide patent counsel with an analysis of the evolving role of attorney opinions in defending 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. (2016). Following Halo's guidance, more district courts allow juries to consider willfulness allegations. Accordingly, consider that asserting the advice of counsel as a defense to willful infringement can result in a 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. However, the Federal Circuit has clarified that non-infringement opinions have an important role in defending induced infringement claims. In this context, opinions of counsel can also 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.

READ MORE

Outline

  1. Willful infringement, inducement of infringement, and use of opinions of counsel
    1. The "totality of the circumstances" standard for determining willfulness
    2. Reliance on opinions of counsel
    3. Updating opinions
    4. Recent developments and their impact on how to use opinions
  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 an opinion of counsel practice
    2. Rethinking defending against willfulness claims
    3. When should corporate counsel seek outside opinions to protect themselves from willful infringement claims?

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

Anderson, Maria
Maria Anderson

Partner
Knobbe Martens

Ms. Anderson has extensive experience in comprehensive, strategic client counseling in all aspects of intellectual...  |  Read More

Cicero, Michael
Michael A. Cicero

Partner
Taylor English Duma

Mr. Cicero focuses his practice on patent prosecution and preparation of opinions. His work also extends to trademark...  |  Read More

Heckenberg, Donald
Donald H. Heckenberg, Jr.

Partner
Venable

Mr. Heckenberg’s practice includes patent application preparation and prosecution, representing clients in...  |  Read More

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

Download