Patent Law

The above-titled presentation by Scott W. Breedlove of Vinson & Elkins (co-authored by David J. Tobin) was given at The University of Texas School of Law's 14th Annual Advanced Patent Law Institute on October 29?30, 2009 in Austin, TX.  The following is excerpted from the presentation:

Opinions of counsel are not cheap. Is their potential benefit for future patent litigation still worth the cost? In many circumstances, particularly where willfulness and inducement theories are likely to play an important role, the answer is yes.

When it comes to willful patent infringement and induced infringement, the stakes are high. If lost profits and reasonable royalties were not enough, courts have the discretion to increase damage awards to a patentee up to three times upon a finding of willful infringement. And through inducement, a defendant can be liable for infringement even if the defendant does not itself practice the claim. Inducement claims, like joint-infringement theories, seem to be increasing in importance as the computer systems of multiple parties interact more and more in the internet age.

Many of the issues leading to the obsession with opinions of counsel have been resolved, but these opinions can still be the critical rebuttal to a plaintiff?s willfulness allegations when the accused infringer had meaningful knowledge of the patent prior to the lawsuit. For those accused of inducing infringement, an opinion of counsel can also be persuasive evidence to help prove lack of the requisite intent. Indeed, last year?s Broadcom decision suggests it can be a mistake not to obtain an opinion when it comes to inducement theories.

This paper explores factors that inform the value of opinions in litigation, including in the inducement context as illuminated by Broadcom, and suggests practical steps for using opinions effectively.

See the full presentation here.