HOW SOME PATENT SAVVY COMPANIES UTILIZE OPINIONS OF COUNSEL TO MANAGE THEIR RISK TOLERANCE FOR POTENTIAL WILLFUL INFRINGEMENT CLAIMS.

In 2016, the Supreme Court’s 2016 decision in Halo Elecs. Inc. v. Pulse Elecs., Inc., 136 S.Ct 1923 (2016) scrapped the Federal Circuit’s Seagate bright-line test for proving willful infringement.  Whereas Seagate essentially eliminated the need to obtain opinions, because you could rely on developing a reasonable litigation defense, Halo eliminated that option.  Since then, the patent world has revisited whether it again makes good sense to obtain an opinion of counsel, and rely on it, to mitigate the threat of enhanced damages for willful patent infringement.  In the article, we report on discussions we had with IP leadership at some of the most patent savvy, sophisticated companies about to what extent they are obtaining, and using, opinions of counsel in connection with mitigating their risk of willful infringement, and separately enhanced damages.  As with many important issues in patent law, the answer varies with the specific circumstances, but there definitely is a refreshed role for opinions of counsel in the right circumstances.