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CD/DVD of a 90-minute CLE teleconference with Q&A
Sponsored by the Legal Publishing Group of Strafford Publications
Conducted on Tuesday, June 2, 2009
Now available on CD/DVD
Price: $297
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Please note: You will be taken to the Strafford website to complete your order. |
 This seminar will discuss the use of opinion of counsel letters in patent infringement suits, the impact of the Seagate and Qualcomm decisions, attorney-client privilege issues, and offer best practices for using opinions of counsel.
Description
Opinions of counsel are traditionally a first line of defense in the event of willful patent infringement claims. However, asserting that defense can put the attorney advice at issue and result in waiver of the attorney-client privilege.
While the Federal Circuit’s 2007 In re Seagate ruling seemed to downplay the importance of opinion letters in willful infringement cases, its more recent Qualcomm v. Broadcom ruling (Sept. 24, 2008) has put life back into their usefulness.
Qualcomm held, in deciding whether a company induced infringement, a jury should consider evidence that the company failed to obtain an opinion letter from outside counsel.
Listen as our authoritative panel of IP attorneys examines the evolving standard for patent infringement claims and the use of opinions of counsel. The panel will discuss the issue of waiver of the attorney-client privilege and provide best practices for employing opinions of counsel post Seagate and Qualcomm.
Outline
- Standard for willful infringement and use of opinions of counsel
- In re Seagate (Fed. Cir. 2007) and the objective recklessness standard
- Qualcomm v. Broadcom
- Importance of competent opinion of counsel in defending willful infringement allegations
- Reliance on opinions of counsel
- Updating opinions
- Changes in how opinions are used
- Court treatment
- How courts are applying Qualcomm v. Broadcom
- How the courts are applying Seagate
- Waiver
- Scope of discovery
- Privilege waiver for opinion counsel and trial counsel
- Privilege waiver for in-house counsel
- Other in-house personnel and in-house investigations
- Waiver of work product immunity
- Best practices post-Qualcomm and Seagate
- Implications for opinion of counsel practice
- Rethinking defending against willfulness claims
- No affirmative duty to get opinion, but proceed with caution if monitoring others’ patents
- When should corporate counsel now seek outside opinions to protect themselves from willful infringement claims?
- Cost-benefit analysis (cost of single opinion v. amount at stake in patent lawsuit)
Benefits
The panel will review these and other key questions:
- What is the practical impact of the recent Federal Circuit decisions on utilizing opinions of counsel?
- How does Seagate‘s “objective recklessness” standard impact legal advice on proactive clearance analysis for product planning and strategic portfolio development?
- How can counsel reconcile the seemingly contradictory decisions in Seagate and Qualcomm?
- Under what circumstances should corporate counsel seek outside opinions of counsel to protect their company from infringement claims?
Following the speaker presentations, you’ll have an opportunity to listen to the original live Q&A.
Faculty
Mark P. Wine, Partner
Orrick Herrington & Sutcliffe, Irvine, Calif.
He has extensive experience in all aspects of intellectual property litigation in a broad spectrum of business and industry. He has served as lead counsel in many patent infringement matters. He has represented clients in contested intellectual property matters in many states, before the International Trade Commission (ITC) and in several international jurisdictions.
Alison Tucher, Partner
Morrison & Foerster, San Francisco
In her complex commercial litigation practice, she represents large corporations in multi-patent disputes. She worked on an amicus brief filed in Seagate, urging the court to overrule Underwater Devices and to adopt a recklessness standard for willfulness, and to protect attorney-client communications by holding that the waiver does not extend to trial counsel.
Sanford E. Warren Jr., Partner
Akin Gump Strauss Hauer & Feld, Dallas
He practices intellectual property litigation, including successful defense of patent infringement suits, in the medical device, electronic, chemical, semiconductor and telecommunications fields. He also manages worldwide trademark portfolios in the aviation, chemical and health fields.
Register Today!
Price covers an unlimited number of staff at your office location. Can’t participate in the live seminar? A CD of the full event proceedings, including Q&A and PDF files of all handouts, will be available 10 days after the seminar.
Continuing Legal Education (CD)
Continuing Legal Education credits for listening to the CD are granted in NY and CT and processing is available for an additional $65 per person per state.
Other states may grant MCLE credits for listening to the conference CD-check with your state about applying for self-study credit on CD-listening.
Please note: You will be taken to the
Strafford website to complete your order.
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