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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.
New York's Latest Cybersecurity Commitment
On Aug. 9, 2023, Gov. Kathy Hochul introduced New York's inaugural comprehensive cybersecurity strategy. In sum, the plan aims to update government networks, bolster county-level digital defenses, and regulate critical infrastructure.
Law Firms are Reducing Redundant Real Estate by Bringing Support Services Back to the Office
A trend analysis of the benefits and challenges of bringing back administrative, word processing and billing services to law offices.
Bit Parts
Summary Judgment Denied Defendant in Declaratory Action by Producer of To Kill a Mockingbird Broadway Play Seeking Amateur Theatrical Rights
How AI Has Affected PR
When we consider how the use of AI affects legal PR and communications, we have to look at it as an industrywide global phenomenon. A recent online conference provided an overview of the latest AI trends in public relations, and specifically, the impact of AI on communications. Here are some of the key points and takeaways from several of the speakers, who provided current best practices, tips, concerns and case studies.