The general industry consensus that formal validly and infringement opinions were unnecessary is changing after two recent US Supreme Court case decisions were announced.
After Halo Electronics Inc. v. Pulse Electronics Inc., 136 S. Ct. 1923 (2016), it is easier for patent owners to collect increased damages and attorneys’ fees from infringers. Octane Fitness v. Icon Fitness, 134 S. Ct 1749 (2014), also bolstered the ability for infringers to obtain attorney fee awards.
Patent Attorney veterans Jeffery Sheldon and Ivan Posey developed a list of situations where patent validity infringement opinions are advisable:
- Being sued for patent infringement;
- Receiving a cease and desist letter;
- Developing a product or process based on that of a competitor, where the competitor has patent protection;
- Patents developed in a right to use study;
- Patents developed in a patentability study; and
- Patents cited by a Patent Office when prosecuting a patent.
Attorney Patent Validity and Infringement Opinions Back in Vogue, Law 360 (July 22, 2016)
How does a patent attorney opinion help? If the patent opinion concludes there is no infringement or the claims are invalid, there would be no willful infringement, avoiding treble damages and attorneys’ fees. Sheldon and Posey added that the Patent Attorney writing the opinion should be a good trial witness. Experience is important, as well as demeanor during voire dire.
The Supreme Court in Octane Fitness eliminated the “clear and convincing evidence” standard of Brooks Furniture. The new standard imposed by Octane Fitness leaves it to the district court’s discretion. However, the Supreme Court in Octane gave the district courts some guidance in defining which cases are “exceptional” under the meaning of Section 285—cases that stand out from the others with respect to the substantive strength of a party’s litigating position or the unreasonable manner in which the case was litigated. 134 S. Ct., 1751.
Any business that plans to sell a product or service should seek a legal opinion from competent patent counsel before commencing sales.
Tracy Jong has been an attorney for more than 20 years, representing inventors, start-ups and businesses in a wide array of legal matters. She is a licensed patent attorney.
She also maintains a website and blog with practical information on legal and business issues affecting the industry. Follow her, sign up for her free firm app or monthly newsletter.
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