About the Course
Introduction
This CLE course will provide patent counsel with an examination of the role of the advice of counsel defense in patent infringement cases and the temporal and subject matter scope of the potential waiver of the attorney-client privilege and work product protection when an accused infringer relies upon such a willfulness defense. The panel will also discuss recent decisions and offer guidance to counsel and companies for protecting privileged communications and attorney work product when relying upon the advice of counsel defense.
Description
The Supreme Court's decision in Halo Electronics Inc. v. Pulse Electronics Inc., 136 S. Ct. 1923 (2016) significantly changed the standard for establishing a claim of willful patent infringement. Opinions of counsel are a more important factor that courts examine when exercising their discretion and award enhanced damages.
What Halo failed to address, however, is the interplay between reliance on an opinion of counsel defense to rebut a charge of willful infringement and the scope of a waiver of the attorney-client privilege and work product immunity.
Since Halo, several federal district courts have addressed privilege and work product waiver when the advice of counsel defense is asserted. These district courts considered several important issues, including whether advice-of-counsel waivers: (1) are limited to pre-litigation conduct; (2) can extend to communications between opinion counsel and trial counsel; (3) can extend to communications between inside counsel and outside counsel; and (4) may result in the waiver of privilege concerning collateral issues.
Listen as our authoritative panel of patent attorneys examines the issues of privilege in the context of opinions of counsel and the use of the advice of counsel defense. The panel will review recent decisions and offer best practices for limiting the scope of discovery of communications and work product related to the advice of counsel defense and protecting the privilege.
Presented By
Mr. Cooper is Counsel in King & Spalding's San Francisco office, where he is a member of the Business Litigation Group and specializes in disputes involving intellectual property, IP licensing, antitrust and FOIA issues. He has more than 30 years of experience litigating high profile "bet-the-company" patent, copyright, trade secret and antitrust cases for companies like Meta, Cisco, VMware, LEDVANCE, and Samsung. Mr. Cooper also is a well-known thought leader and regular contributor to organizations like the Sedona Conference on such disruptive intellectual property issues as standard essential patents (SEPs) and artificial intelligence. His intellectual property and antitrust practice is rooted in contexts that involve computer hardware and software, as well as AI and network-related applications. Mr. Cooper also has extensive experience arguing and briefing matters before the United States Supreme Court, multiple federal courts of appeal, and multiple state appellate bodies, including the California Supreme Court. He likewise has extensive experience with respect to both ITC and Inter Partes Review proceedings. Mr. Cooper has further advised numerous companies on complex IP licensing issues involving SEPs, the impact of bankruptcy, and due diligence relating to mergers and acquisitions. Many of the matters on which he has worked, including at the appellate level, have garnered significant national attention, such as his representation of Facebook and Mark Zuckerberg in the copyright and trade secret litigation that was dramatized in the Academy Award winning movie "The Social Network."
Ms. Hadzimehmedovic brings extensive experience litigating complex patent cases in U.S. district courts, the ITC, and the International Chamber of Commerce. She has litigated significant patent matters for industry-leading technology companies in diverse technology areas, including computers; semiconductor devices, processing, and packaging; software; pharmaceuticals; Wi-Fi- and location services; content delivery network services; and medical devices. Ms. Hadzimehmedovic is a member of the Board of Directors for the Federal Circuit Bar Association and a member of the Working Group 9/10 Steering Committee for the Sedona Conference. Prior to practicing law, Ms. Hadzimehmedovic worked as a scientist and technical editor for the United States Pharmacopeia, an official standards-setting authority for medicines and other health-care products.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Date + Time
- event
Thursday, April 16, 2026
- schedule
1:00 p.m. ET./10:00 a.m. PT
I. Privilege in the context of opinions of counsel and the use of the advice of counsel defense
II. Recent decisions and guidance for trial counsel
III. Best practices
A. Limiting the scope of discovery of communications and work product
B. Protecting the privilege
The panel will review these and other high priority issues:
- What is the practical impact of recent decisions on utilizing opinions of counsel in defense of willful infringement while protecting privileged communications and attorney work product?
- What considerations regarding possible waiver of the attorney-client privilege and work product immunity should counsel consider before asserting the advice of counsel defense in patent infringement litigation?
- What are the best practices for counsel and corporations to preserve the attorney-client privilege and work product immunity?
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