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Federal Circuit Rewrites Law on 'Advice of Counsel' Defense to Willful Infringement
The Federal Circuit Court of Appeals has just issued an opinion that changes precedent in U.S. patent law, namely, Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Haldex, __ F.3d __ (Fed. Cir. 2004). Previously, for a company that was accused of patent infringement, the general law was that the company had “an affirmative duty to exercise due care” to avoid infringement, including “the duty to obtain competent legal advice from counsel before initiation of any possible infringing activity.” Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380, 1389-90 (Fed. Cir. 1983). Failure to obtain such legal advice was considered a key factor in determining whether infringement is willful. A finding of willful infringement can be devastating, as it can subject a defendant to enhanced damages (up to three times actual damages) and/or the payment of the plaintiff's attorneys' fees. 35 U.S.C. ”284 and 285.
To comply with the duty of due care, companies would typically obtain a written opinion of patent counsel advising the company, hopefully, that there is no infringement. If the company was later sued for patent infringement, the company would frequently disclose to the plaintiff the written opinion of non-infringement as a defense to willful infringement. The company would also argue to the fact-finder (judge or jury) that it could not have willfully infringed the patent because it reasonably relied upon the opinion of its counsel that it was not infringing. Thus the opinion of counsel often acted as a “shield” to a claim by the plaintiff of willful patent infringement. On the other hand, if no opinion was obtained by the company, or if an opinion was obtained but the company decided not to introduce it in evidence to the fact-finder, the judge or jury could be free to infer that either no opinion was obtained or, if an opinion was obtained, that it was unfavorable to the company. Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 2565 (Fed. Cir. 1986); Fromson v. Western Litho Plate & Supply Co., 853 F.2d 1568 (Fed. Cir. 1988). This adverse inference substantially increased the possibility of an enhanced damages or attorneys' fees award against those companies that were sued for infringement but did not obtain a solid opinion of non-infringement. It also placed those defendants that did obtain an opinion of counsel in the difficult position of either producing the opinion ' and waiving the attorney-client privilege as to the opinion and related documents ' or risking the impact of the adverse inference.
Beach Boys Songs Written Decades Ago Triggered Current Quarrel With Lawyers
There's current litigation in the ongoing Beach Boys litigation saga. A lawsuit filed in 2019 against Nevada residents Mike Love and his wife Jacquelyne in the U.S. District Court for the District of Nevada that alleges inaccurate payment by the Loves under the retainer agreement and seeks $84.5 million in damages.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Transfer Tax Implications on Real Property Leases
The real property transfer tax does not apply to all leases, and understanding the tax rules of the applicable jurisdiction can allow parties to plan ahead to avoid unnecessary tax liability.