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The Intellectual Property StrategistKickerSectionsNewsLJN Newsletters

Patent Opinions, Willfulness and Inducement

By Bruce Barker and Frederick Hadidi

Before the Federal Circuit's 2007 en banc decision in In re Seagate Technology, LLC, 497 F.3d 1360, it was common for companies threatened with patent infringement to get a written opinion from experienced patent counsel. These opinions were considered the best way to establish a company's good faith belief that it did not infringe ' evidence that could later be used to prove that the company lacked the intent required to willfully infringe or induce infringement.

Seagate held that to avoid liability for willfulness, an accused infringer must not be “reckless” in the sense that it “acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” 497 F.3d at 1371. Although this changed the willfulness standard, the court did not fully explain how this new standard would be applied in practice. Recent decisions have begun to fill in the gaps left by Seagate. They suggest that a competent opinion is still an effective defense to a willfulness charge, and that a jury may consider a defendant's failure to obtain an opinion when determining the defendant's intent for purposes of willfulness and inducement. Also, legitimate trial defenses may be sufficient to establish that a defendant's actions at the time of infringement were not “objectively reckless.”

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