Opinion Of Counsel

  • BASICS: “[D]efenses prepared for a trial are not equivalent to the competent legal opinion of non-infringement or invalidity which qualify as ‘due care’ before undertaking any potentially infringing activity.” Crystal Semiconductor (Fed. Cir. 03/07/01). The factors Fed. Cir. has considered in determining competency are many.
    • AIA: Lack Of Opinion Inadmissible On Willfulness And Inducement: Failure to obtain or present to court/jury advice of counsel re the asserted patent “may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.” (Sec. 17) 35 U.S.C. § 298 (AIA). {Per 2013 AIA Technical Corrections, applies to any civil action commenced on or after Jan. 14, 2013. Possibly also applies to any patent issued after 09/17/12, per AIA Sec. 35?}
  • Lack Of Opinion No Longer Creates Adverse Inference: Pre-Seagate, the en banc Federal Circuit ruled in Knorr-Bremse (Fed. Cir. 09/13/04):
    • “no adverse inference [or evidentiary presumption] that an opinion of counsel was or would have been unfavorable flows from an alleged infringer’s failure to obtain or produce an exculpatory opinion of counsel.”
    • the existence of a substantial defense to infringement is a factor in determining willfulness, but is not per se sufficient to defeat liability for willful infringement.
    • it would not decide “whether the trier of fact, particularly a jury, can or should be told whether or not counsel was consulted (albeit without any inference as to the nature of the advice received) as part of the totality of the circumstances relevant to the question of willful infringement.”
  • But (Pre Seagate At Least) Relying On Incompetent Opinion May Create Adverse Inference: If an opinion is relied on, its competence (or incompetence) can be considered by the court. Incompetence of the opinion can be considered even though not presenting an opinion at all can’t be used to draw an inference that the opinion would have been adverse. See Golden Blount (Fed. Cir. 02/15/06).
  • (Pre-Halo) Opinion Of Counsel May Or May Not Defeat Willfulness: compare Lexion (Fed. Cir. 08/28/08) (non-precedential) (“We do not think it was objectively reckless for Northgate to obtain and rely on the opinion of counsel, which had predicted a favorable outcome in view of the renewed motion for JMOL then pending before the district court.”) with Bard Peripheral I (Fed. Cir. 02/10/12) (aff’g jury verdict of willful infringement despite opinion letter that patent was invalid: opinion relied on same art that the PTO had considered and was by same firm that had litigated and lost interference proceeding on this patent; and aff’g doubling of $185.6MM damages award to total of $371.2MM, plus $19MM in attorney fees.), vacated in part Bard Peripheral II (Fed. Cir. 06/14/12) (holding that objective prong is a question of law based on underlying mixed questions of law and fact and subject to de novo review, and remanding to trial court to decide issue as a matter of law.), see Bard Peripheral III (Fed. Cir. 01/13/15) (2-1) (aff’g willfulness in “an unusual case”).
  • TIPS: