Reprinted with Permission from Law360
New Life For Opinions Of Counsel In Patent Litigation
Law360, New York (December 7, 2016, 10:28 AM EST) –
After 2007, the value of obtaining an opinion of counsel when confronted with claims of infringement
reached a historical low. Federal Circuit case law made such evidence, which generally relates to the
subjective state of mind of an alleged infringer, less relevant than objective evidence in resolving legal
issues such as willfulness. But two recent U.S. Supreme Court decisions, in combination with a new
statutory provision in the America Invents Act, have made opinions of counsel a more attractive option for
accused infringers. While the full impact of these decisions is not yet certain, trial courts already appear to
be giving greater weight and prominence to opinions of counsel in evaluating claims of willful and induced
infringement.
Opinions of Counsel
Prior to 2007, an accused infringer had an affirmative duty of due care to determine whether or not it was
infringing the accuser’s patent. This duty included an obligation to seek out legal advice of counsel before
starting any potentially infringing activity. Reasonable reliance on a competent opinion was “highly
probative evidence” of a good-faith defense to a claim of willful infringement, and the failure to obtain a competent
opinion could be evidence of a failure to act with the required due care.
The Federal Circuit’s 2007 decision in In re Seagate overturned that framework. It replaced the previous standard with a
requirement that allegations of willful infringement be proven by a showing of not only subjective intent but also objective
recklessness. In re Seagate Tech. LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc). The Seagate opinion emphasized
that there was “no affirmative obligation to obtain opinion of counsel” when confronted with a claim of infringement. Id.
By requiring both subjective and objective evidence of willfulness, the Federal Circuit undercut the primary utility of
obtaining an opinion from counsel. A defendant could defeat a willfulness allegation solely on the basis of objective
evidence, and the Federal Circuit held that any reasonable defense — even if developed after notice of inf ringement and
introduced for the first time at trial — could suffice to defend against a charge of willful infringement. See, e.g., Carnegie
Mellon Univ. v. Marvell Tech. Grp. Ltd., 807 F.3d 1283, 1301 (Fed. Cir. 2015). If the existence of any reasonable defense
ends the inquiry, evidence of diligent investigation or reasonable reliance on an opinion of counsel has diminished value.
Recent Supreme Court Decisions
Two significant Supreme Court opinions and one statutory addition in the last few years suggest that obtaining the advice
of counsel may now have greater value.
First, the Supreme Court’s 2011 opinion in Global-Tech Appliances Inc. v. SEB SA held that induced infringement
Todd Zubler
George Brell
