Kilpatrick Townsend Partner James Isbester recently addressed the Intellectual Property Section of the Contra Costa County Bar Association at a CLE event held at the firm’s Walnut Creek office. The presentation, “When Is an Opinion of Counsel Required in the New Post-Halo Environment?”, provided key insight on changes regarding the legal aspects of patent opinions.

Top takeaways from Mr. Isbester’s analysis, include:

  • The Supreme Court’s decision in Halo Electronics, Inc. v. Pulse Electronics, 136 S. Ct. 1923 (2016) and the subsequent lower court cases applying Halo make clear that willful infringement has returned as a real but containable risk.
  • Willful infringement is a question of the state of mind at the time infringement commenced (or the patent was first discovered). The later discovery of a reasonable defense is not relevant.
  • But willful infringement is meant for really egregious cases only. Facts that show good faith (i.e., not egregious) are: a) compliance with policies to protect IP rights of third parties; b) clearance (freedom to operate) studies; c) opinions of counsel; d) efforts to design around; and, e) prompt action in response to learning of a patent.
  • Obtain formal opinion when: a) only defense is invalidity based on third party prior art; b) non-infringement rests upon the legal interpretation of a specific term; or c) noninfringement turns upon legal analysis of doctrine of equivalents. Otherwise, a summary memo regarding a specific patent or a freedom to operate memo covering all patents prior to product launch should be adequate.
  • Don’t knowingly infringe a valid patent!

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