We regularly provide a full range of opinions for our clients, including non-infringement, freedom to operate, invalidity and unenforceability opinions. Because one size does not fit all, we work with our clients to determine the best option for their particular circumstances, ensuring the most cost-effective route is pursued without compromising quality.
The importance of an opinion provided by competent patent counsel cannot be overstated in the United States. If a company is aware that its activities might be alleged to be infringing a United States patent, it puts itself at significant risk of willful infringement and trebled damages if it does not obtain an opinion of counsel to negate such possibility. Understanding the legal significance of an opinion of counsel is critical to minimizing your company's risk.
Many clients ask why even obtain an opinion at all? The reasons are illustrated through a quick survey of the relevant legal precedents.
In 1983, the Court of Appeals for the Federal Circuit imposed an “affirmative duty to exercise due care whether or not he is infringing.” That “affirmative duty include[d], inter alia, the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity.”
In 2007, however, the importance of opinions of counsel was greatly diminished when the Federal Circuit held that willful infringement could only be found if the accused infringer acted despite “an objectively high likelihood that its actions constituted infringement of a valid patent” Under this new “Seagate” standard, any marginal benefit of an opinion of counsel over a valid defense, was often outweighed by the disadvantage of having to waive attorney-client privilege in order to rely upon the opinion.
The risk of willful infringement landscape began shifting again in 2011 when the Supreme Court held that the alleged infringer's subject intent was relative to the question of induced infringement and whether the accused infringer was “willfully blind” to the likelihood of infringement. In 2016, the Supreme Court overruled the Seagate standard for willful infringement; rather than focusing on whether a defendant lacked an objectively reasonable litigation defense, the Supreme Court held that the proper focus was on the infringer's understanding at the time of infringement.
Given the current state of the law, prudent companies remain vigilant and proactive in avoiding potential claims of willful infringement. Best practices include avoiding even the appearance willful blindness to such possibilities by securing appropriate opinion(s) of counsel in a timely manner.
 Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 1389 (Fed. Cir. 1983).
 In re Seagate, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc).
 Global-Tech Appliances, Inc. v. SEB S.A, 563 U.S. 754, 766 (2011).
 Halo Electronics, Inc. v. Pulse Electronics, 136 S.Ct. 1923, 1933 (2016).