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Should You Get an Exculpatory Patent Opinion? Some Neglected Considerations
In general, when confronted with the threat of a patent infringement suit, companies undertake a simple calculation to determine whether to seek an exculpatory opinion of counsel. Specifically, the potential infringer determines the amount of damages likely to be assessed in the event infringement is found, and whether the enhancement of those damages exceeds the (often considerable) cost of a non-infringement opinion. Of course, the necessity of obtaining an opinion is likely to be affected by the pending en banc opinion from the Federal Circuit in Knorr-Bremse v. Dana Corp. However, assuming that exculpatory opinions will continue to have a role in the willfulness calculus, this simple cost-benefit analysis will remain in use.
Unfortunately, this simple calculation fails to incorporate all of the relevant factors in determining whether to obtain the opinion. An exculpatory opinion can provide ancillary benefits that should be considered. These benefits can be substantial, in certain circumstances even mandating the procurement of an opinion where the threat of litigation is remote. In particular, companies faced with the decision of whether to obtain an exculpatory opinion should consider:
- The usefulness of an exculpatory opinion in settlement or licensing negotiations;
- The usefulness of an exculpatory opinion to avoid future infringement or suggest a design-around; and
- The effect of an exculpatory opinion on the jury in a patent infringement trial.
Each of these factors is discussed further below.
The DOJ's Corporate Enforcement Policy: One Year Later
The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.
The DOJ's New Parameters for Evaluating Corporate Compliance Programs
The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.
Use of Deferred Prosecution Agreements In White Collar Investigations
This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.
Bankruptcy Sales: Finding a Diamond In the Rough
There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.
A Lawyer's System for Active Reading
Active reading comprises many daily tasks lawyers engage in, including highlighting, annotating, note taking, comparing and searching texts. It demands more than flipping or turning pages.