Written Opinions Of Counsel: Valuable Tools for Avoiding Willful Patent Infringement

Written opinions of counsel are gaining renewed interest as a valuable tool to limit liability for willful patent infringement. A patent opinion that is competently written by a registered patent attorney sets forth the factual and legal basis for finding a patent not infringed, invalid, and/or unenforceable. Although a patent opinion is not required to unequivocally state that the patent is not infringed, invalid, and/or unenforceable, the opinion must be reasonable and prudent. However, to be effective, the timing of the rendered patent opinion may be critical.

In 2016, the U.S. Supreme Court issued a decision in the case of Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923, making it easier for courts to find willful infringement in patent cases and award enhanced damages. Prior to Halo, district courts were guided by the so-called Seagate test in which plaintiff patent holders had to “show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Plaintiff patent holders also had to prove that the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.” Thus, under the Seagate test, an infringer could effectively escape a court finding willful infringement by constructing an objectively reasonable infringement defense at the time of trial — even if the infringer was unaware of these defenses upon becoming aware, or being put on notice, of the potential infringement.