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”?