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Course Details

Course Information
  • smart_display Format

    Live Online with Live Q&A

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Patent

Date & Time
  • event Date

    Wednesday, June 25, 2025

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

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.

Faculty

Maria Anderson
Partner
Davis Wright Tremaine LLP

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 English Duma, LLP

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.

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Description

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.

Outline

  1. Willful infringement, inducement of infringement, and use of opinions of counsel
    1. The "totality of the circumstances" standard for determining willfulness
    2. Reliance on opinions of counsel
    3. Updating opinions
    4. Recent developments and their impact on how to use opinions
  2. Waiver
    1. Scope of discovery
    2. Privilege waiver for opinion counsel and trial counsel
    3. Privilege waiver for in-house counsel
    4. Other in-house personnel and in-house investigations
    5. Waiver of work product immunity
  3. Court treatment
  4. Best practices for employing opinions of counsel
    1. Implications for an opinion of counsel practice
    2. Rethinking defending against willfulness claims
    3. 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?