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Plan for the New Year, Maybe More Opinions of Counsel?

December 14, 2016
Post by Xiaohong Liu, Ph.D.

One of the most important US Supreme Court decisions in 2016 or in recent years is Halo Electronics Inc. v. Pulse Electronics Inc.  In Halo, the Supreme Court reshaped the law on enhanced damages by relaxing the standard for providing willful infringement and making it easier for patent owners to recover enhanced damages.  

Before the Halo decision, obtaining enhanced damages for willful infringement was very difficult according to the standard set by the Court of Appeals for Federal Circuit (CAFC), in part because an accused infringer could not be found liable for willful infringement as long as the accused infringer could present a reasonable defense during the trial. Previously, one might be able to disregard someone's patent and avoid a finding of willful infringement as long as one clever defense could be presented during the trial.  Also, because of this CAFC standard, an opinion of counsel when confronted with claims of infringement before moving forward with the infringing activity was not critical.  This situation could change with the Halo decision.

The Halo decision gives district court judges wide latitude to decide how much to enhance damages if willful infringement is found or even to decide not to increase the award and increases the opportunities for jurors to hear evidence and arguments about willful infringement, which in turn can lead to more willful infringement verdicts for patent owners and make opinions of counsel more attractive for anyone else for conducting any potential infringing activities. 

Two recent post-Halo district court decisions, however, suggest that opinions of counsel are, indeed, becoming more relevant again in the resolution of willfulness allegations.

In LoggerHead Tools LLC v. Sears Holding Corp., No. 12-CV-9033, (N.D. Ill. Sept. 20, 2016), the district court included a non-infringement opinion prior to the litigation as highly probative evidence of good faith to grant a motion for summary judgment of no willful infringement.  In Trustees of Boston University v. Everlight Electronics Co., No. 12-11935-PBS, (D. Mass. July 22, 2016), the district court refused to award enhanced damages even after an adverse claim construction was found in a related litigation and a jury found willful infringement, because the defendant had sought the advice of counsel upon the allegations of infringement and maintained the same defense during the trial.

Maybe it is time to give an opinion of counsel another consideration in light of the Halo decision, because it may provide a greater benefit with less risk to a party accused of infringement.


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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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