Devoted to Corporate Attorneys, Corporate Lawyers, and Corporate Counsel

The following does not constitute legal advice.

The Federal Circuit on August 20, 2007 issued an en banc opinion in In re Seagate Technology. In the case, there was an issue involving infringement.  The Federal Circuit overruled Underwater Devices, another case relating to intellectual property.  The court abandoned the affirmative duty of due care.  Willful infringement requires at least a showing of objective recklessness. This means there is no affirmative obligation to obtain an opinion letter from patent counsel.

The Federal Circuit held that when a defendant relies on a patent opinion letter, the scope of waiver of the attorney-client privilege and work product immunity does not generally extend to trial counsel. Those who share opinion letters during an acquisition negotiation with a buyer or target might be wary of the lost of attorney-client.  In sharing during an acquisition situation, the parties might take care not to share until the transaction has a good chance of closing.

A patentee who fails to move for a preliminary injunction in an intellectual property case cannot accrue enhanced damages based solely on post-suit conduct. A willfulness allegation in the infringement complaint must be based on pre-filing conduct and that post-filing conduct can be addressed through preliminary injunction proceedings.