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Patent Applications Why Does Litigation Experience Matter to Patent Applications? By having patent applications prepared and prosecuted by attorneys who have actual litigation experience, the applications can be fortified against a number of limitations or defenses that may be raised in any litigation. In addition, litigation experience can help the attorney effectively broaden the claim scope obtained during the prosecution phase. | ||||
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Patent Applications How Important Is Experience With Patent Prosecution Patent counsel that can draw on their technical knowledge and extensive Patent Office experience can obtain stronger and broader patent coverage to better protect your technology position. | ||||
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Opinions of Counsel Why Prepare An Opinion of Counsel? Section 284 of Title 35 provides that in patent infringement cases tried to a jury, a trial court may order that a judgment be entered in favor of a claimant for up to three times the compensatory damages as determined by the jury. While the statute does not set out the standards the trial court should apply in deciding whether or not to increase damages, the Court of Appeals for the Federal Circuit has approved such awards where the fact finder has determined an infringer acted in wanton disregard of the patentee's rights. Mathis v. Spears, 857 F.2d 749, 754 (Fed. Cir. 1988) ("Provisions for increased damages . . . are available as deterrents to blatant, blind, willful infringement of valid patents."). Whether an infringer acted willfully or wantonly is a question of fact that rests on a determination of the infringer's state of mind. Read v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992). A number of factors may be relevant to determining the infringer's state of mind, including evidence that the infringer copied the ideas or design, evidence that the infringer had actual notice of the patent, and evidence that the infringer sought, obtained and justifiably relied on legal advice from counsel on whether or not the patents were invalid or infringed. In determining whether or not an infringer's reliance on an opinion of counsel was reasonable, courts have found it relevant to look at when the infringer sought counsel's advice (before or after commencing the infringing activities); the infringer's knowledge of the attorney's independence, skill and competence; the infringer's knowledge of the nature and extent of analysis performed by counsel in providing the opinion; and whether the opinion contains sufficient internal indicia of credibility, including a validity analysis predicated on a review of the file histories, and an infringement analysis that compares and contrasts the potentially infringing method or apparatus with the patented inventions. See generally, Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992); Ortho Pharmaceutical Corp. v. Smith, 959 F.2d 936 (Fed. Cir. 1992); Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983). | ||||
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Opinions of Counsel The Assertion of Good Faith Reliance on the Advice of Counsel is a Waiver of the Attorney-Client Privilege Typically, counsel's advice to a client on whether or not the client may be infringing a valid patent is not relevant to the claims in an action for patent infringement. Evidence of that advice would not tend to make the existence of any fact of consequence to the determination of the action more or less probable and would not, therefore, fall within the definition of relevant evidence under Federal Rule of Evidence 401. But when an alleged infringer decides to respond to a claim of willful infringement by offering evidence that he or she reasonably and in good faith relied on advice of counsel in making, using or selling the allegedly infringing device, then the advice becomes relevant and admissible. Documents and testimony relating to that advice are relevant in that they are probative of the alleged infringer's intent. They are admissible because the alleged infringer has waived the privilege as to the subject matter of the advice. Hercules Inc. v. Exxon Corp., 434 F. Supp. 136, 156 (D. Del. 1977). Such documents and testimony relate at least to the information that was exchanged between the alleged infringer and the opinion counsel. | ||||
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Opinions of Counsel Whether the Assertion of Good Faith Reliance on the Advice of Counsel is also a Waiver of the Immunity for Work Product There is authority for the proposition that any waiver will be narrowly applied and will not broadly include waiver of the work product immunity. Thorn EMI North America, Inc. v. Micron Technology, Inc., 837 F. Supp. 616, 621 (D. Del. 1993). However, there are also cases suggesting that the waiver is broader and will include work product waiver. Dunhall Pharmaceuticals Inc. v. Discus Dental Inc., 994 F. Supp. 1202, 46 USPQ2d 1365 (C.D. Calif. 1998). | ||||
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