Patent Infringement: Structuring Opinions of Counsel
Leveraging Opinion Letters to Reduce the Risks of Liability and Enhanced Damages
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Thursday, June 9, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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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.
Ms. Anderson has extensive experience in comprehensive, strategic client counseling in all aspects of intellectual property. She has been very active in the procurement of patent assets in the computer science and ecommerce fields since 1993, and thus, is a thought leader with respect to patent subject matter eligibility. Ms. Anderson has extensive experience in developing patent and trademark portfolios and developing patent and trademark assets for a diverse group of clients, i.e., from startups to Fortune 100 companies. Accordingly, Ms. Anderson has guided numerous clients from the earliest rounds of financing through IPO and beyond. Ms. Anderson also provides patent and trademark clearance analysis and advice for a wide variety of products and services, including medical devices, food and beverage products and cloud computing services. She also counsels clients on patentability and infringement matters and develops comprehensive IP programs for pre-litigation, licensing and enforcement purposes.
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.
Mr. Heckenberg’s practice includes patent application preparation and prosecution, representing clients in post-grant proceedings before the U.S. Patent & Trademark Office, strategic management of patent portfolios, due diligence investigations, and opinion work. He has particular skill in complex prosecution proceedings before the USPTO, including reissue applications, reexaminations, and supplemental examination. Mr. Heckenberg represents clients in chemical, mechanical, and computer-related arts. Some of the diverse technologies that he has experience with include small-molecule drugs, medical devices, vehicle emission technologies, polymers, papermaking, toner cartridges for laser beam printers, dental technology, and software. Mr. Heckenberg is a former examiner at the USPTO.
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.
- 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?
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?
