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Should You Get an Exculpatory Patent Opinion? Some Neglected Considerations
In general, when confronted with the threat of a patent infringement suit, companies undertake a simple calculation to determine whether to seek an exculpatory opinion of counsel. Specifically, the potential infringer determines the amount of damages likely to be assessed in the event infringement is found, and whether the enhancement of those damages exceeds the (often considerable) cost of a non-infringement opinion. Of course, the necessity of obtaining an opinion is likely to be affected by the pending en banc opinion from the Federal Circuit in Knorr-Bremse v. Dana Corp. However, assuming that exculpatory opinions will continue to have a role in the willfulness calculus, this simple cost-benefit analysis will remain in use.
Unfortunately, this simple calculation fails to incorporate all of the relevant factors in determining whether to obtain the opinion. An exculpatory opinion can provide ancillary benefits that should be considered. These benefits can be substantial, in certain circumstances even mandating the procurement of an opinion where the threat of litigation is remote. In particular, companies faced with the decision of whether to obtain an exculpatory opinion should consider:
- The usefulness of an exculpatory opinion in settlement or licensing negotiations;
- The usefulness of an exculpatory opinion to avoid future infringement or suggest a design-around; and
- The effect of an exculpatory opinion on the jury in a patent infringement trial.
Each of these factors is discussed further below.
Using the Exculpatory Opinion in Settlement or Licensing Negotiations
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Removing Restrictive Covenants In New York
In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?