Patent Infringement: Structuring Opinions of Counsel

Description

The Supreme Court's decision in Halo Electronics Inc. v. Pulse Electronics Inc. (2016) reinvigorated the role of opinions of counsel as a defense to willful patent infringement claims. Juries can therefore assess the reliability of a proffered opinion of counsel as part of its consideration of the totality of circumstances in determining whether an accused act of infringement was willful. However, asserting the advice of counsel as a defense to willful infringement can result in a waiver of the attorney-client privilege and non-opinion work product. This possibility raises the question of how far such waiver might extend, both temporally and communally.

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 role that opinions of counsel can play in patent infringement litigation. The panel will discuss the issue of waiver of the privilege and provide best practices for employing opinions of counsel.