Halo, Civil Procedure, and Defending On-going Infringement Suits

I was listening to conversation about Halo, the decision of the Supreme Court to make it easier to establish willful infringement.  If the case is “egregious” and not “typical” infringement, enhanced damages are now available.  Further, the key time period is the time of moving forward with what turned out to be infringement of a valid patent, not the time of trial.

Of course, the obvious lesson going forward is that it will be more likely for accused infringers to rely upon an opinion of counsel indicating lack of infringement or invalidity (or some other way to avoid liability, like 101 or unenforceability like inequitable conduct or prosecution laches).  No news flash there.  And, of course, the fact that the timing of the opinion — earlier the better — means that there are likely going to be more opinions generated.

So, looking forward:  there will be more opinions used more often, you would think.

What I think is interesting are pending cases where a decision has already been made not to rely upon an opinion of counsel.

There are, no doubt, many pending cases where it is too late because of a scheduling order to disclose an opinion of counsel previously obtained.  The battle there will be over whether there is good cause to modify the scheduling order.  Lawyers in the position of needing to make that modification should do so quickly. I can imagine arguments cutting both ways in a particular case.  But competent lawyers in need of buttressing a defense against willfulness would get on that analysis, and soon.

What if, in contrast, a lawyer had advised a client– based upon the pre-Halo standard — not to get a formal opinion, with the idea being that the defendant would rely upon litigation defenses that were basically expressed to the client somewhat informally at the time of infringement.  Can the defendant now get into evidence the fact that those litigation defenses were communicated originally informally?  Does this implicate the need to modify the scheduling order or comply with some other local rule about waiver of privilege for opinions?

Finally, lawyers should consider cases where clients may pre-Halo have not needed an opinion but now may want to have one.  That advice needs to be given soon!

There are probably other fact patterns, but those jumped out at me sitting and listening today.  Thoughts?

Finally, and on a related note:   The Supreme Court’s statement that it’s the time of infringement that matters and not later is really unworkable and flawed.  A defendant, for example, who finds another piece of prior art later, closer to trial, surely can rely upon that evidence (and/or opinion analyzing it) as (a) confirming the strength of an earlier opinion or  (b) providing evidence that, from that time forward, its infringement was not “egregious”?

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

7 thoughts on “Halo, Civil Procedure, and Defending On-going Infringement Suits

  1. 2

    It’s the confluence (big word – just had coffee) of the timing issue and that damages are not all in the past. Why should a defendant be deemed to have acted egregiously for all time when, one day after being sued, let’s say, it discovers art that, despite reasonable diligence, it didn’t know of?

    And to turn that around a bit, should the law require someone to pay for exorbitant searches and digging for fear that, if it doesn’t find everything, it will be foreclosed from relying on anything it later discovers to defend against future enhanced damages if it is ever sued?

    Here’s another hypo: suppose defendant has no opinion at all. Defends without much of a defense. But discovers the patent was (almost) invalid due to an on-sale bar. So, all damages — even those arising after the defendant could possibly have known of the on-sale issue — are trebled because the conduct occurring BEFORE the defendant discovered the on-sale facts was ‘egregious’?

    1. 2.1

      It is indeed such a confluence – but that is why I distinguished my first comment.

      If – and a certain focus is required – the court is looking at an act at a specific time, then NO subsequently timed information can possibly do anything but obfuscate the conditions (including state of knowledge and belief) of that earlier time.

      Any such post-dated “confirmation” items may surely be pertinent for any calculations of the court for those times to which such later items may apply – but no sooner.

  2. 1

    The Supreme Court’s statement that it’s the time of infringement that matters and not later is really unworkable and flawed.

    Not buying it.

    Your example of “finds another piece of prior art later, closer to trial,” is exactly why this is NOT flawed.

    Such post-act “findings” simply do not – and cannot – inform the situation at the time in question.

    1. 1.1

      I will slightly amend my post – but only concerning the fact that infringement may be an ongoing thing and not limited to an “initial” infringement.

      In such a case, for any acts of infringement after the new finding of prior art, the infringement acts post that new finding might very well be taken into effect for the possible changes in veracity of opinion.

      This distinguishes the last paragraph (b) item as possibly proper from the last paragraph (a) item which remains improper.

      1. 1.1.1

        So… at time of infringement, it’s egregious that I defend the suit. But one day after the suit is filed, I find killer 102 are (but, alas, it’s not really killer as I’m found to have infringed.)

        Under my view, damages before the date of finding that art can be enhanced, but not afterward. Under your view, they’re all enhanced.



          David, if one is accused of infringement, one has a duty to determine the legality of the situation and act appropriately. Regarding defensive opinions, they have to be, I think, objectively reasonable. Recall the recent case where inducement liability was not avoided by an unreasonable claim construction?

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