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
Intermediate
- work Practice Area
Patent
- event Date
Wednesday, June 25, 2025
- 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. Hamp assists clients in all aspects of intellectual property law, with a particular focus on the litigation and enforcement of patent, trademark, copyright and trade secret rights. He represents clients from a variety of industries in the preparation and prosecution of utility and design patent applications before the USPTO, including applications related to the chemical, healthcare, mechanical, computer software, sporting goods, and household products fields. Mr. Hamp has successfully prepared and/or prosecuted applications in many technology areas, including for pharmaceuticals, food and beverage compositions, chemical catalysts, malware detection methods, and semiconductor devices. He also provides counseling and opinion work for utility patent, design patent, trademark and copyright matters, including freedom to practice and validity assessments, domestic and foreign infringement investigations, drafting of license and transfer agreements, and other strategy counseling.
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.
- 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
- 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
- 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?
