Patent Infringement: Structuring Opinions of Counsel
Leveraging Opinion Letters to Reduce the Risks of Liability and Enhanced Damages
A live 90-minute premium CLE video webinar with interactive Q&A
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.
Outline
- Willful infringement, inducement of infringement, and use of opinions of counsel
- The "totality of the circumstances" standard for determining willfulness
- Reliance on opinions of counsel
- Updating opinions
- Recent developments and their impact on how to use opinions
- Waiver
- 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 an opinion of counsel practice
- Rethinking defending against willfulness claims
- 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
Maria Anderson
Partner
Davis Wright Tremaine
Ms. Anderson excels in developing robust patent and trademark portfolios while guiding clients through the... | Read More
Ms. Anderson excels in developing robust patent and trademark portfolios while guiding clients through the complexities of intellectual property law and litigation. She brings three decades of experience in the field to DWT, where she represents a broad range of IP stakeholders—from individual innovators to the top Fortune 500 companies—in industries from software and electronics to medical devices to food + beverage. Trained in computer science, Ms. Anderson also understands many technical aspects of her clients' innovations, with particular expertise in cloud computing and AI.
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Michael A. Cicero
Partner
Taylor Duma
Mr. Cicero focuses his practice on patent prosecution and preparation of opinions. His work also extends to trademark... | Read More
Mr. Cicero focuses his practice on patent prosecution and preparation of opinions. His work also extends to trademark prosecution and copyright matters. Registered to practice before the U.S. Patent & Trademark Office, Mr. Cicero possesses patent prosecution experience in the mechanical and electromechanical arts, and he drafted patents and dozens of office action responses and petitions. Examples of patents he has authored include those covering a three-dimensional prototyping process, a machine for opening signature sheets, and a process of producing soft elastic gelatin capsules. Mr. Cicero also has substantial IP litigation experience. His patent litigation experience includes Markman proceedings, trials, and motion practice. A significant portion of his experience also includes trademark and copyright infringement litigation, which provided him with the experience to author the trademark and copyright infringement portions of a chapter on IP Litigation appearing in the 2016-2018 and 2020 Editions of Georgia Business Litigation.
CloseEarly Discount (through 06/06/25)