Though there is no longer an affirmative duty to seek the opinion of U.S. patent counsel after being put on notice of possible infringement of a U.S. patent (35 U.S.C. § 298), a written opinion of counsel regarding non-infringement/invalidity can still be helpful, not only for purposes of risk assessment but also as a means to limit damages/avoid liability in the event of litigation and provide leverage during licensing or other negotiations.
A timely and competent non-infringement/invalidity opinion, if a U.S. court later determines infringement had occurred, by documenting contemporaneous good-faith belief in non-infringement/invalidity, can negate an allegation of willful infringement and defeat a request to enhance damages by up to three times. (Halo Electronics, Inc. v. Pulse Engineering, Inc., 136 S.Ct. 1923, 1932-34 (2016)).
Similarly, by documenting good-faith belief in non-infringement, a timely and competent non-infringement opinion can negate allegations of specific knowledge of infringement by others, or of deliberate avoidance of acquiring such specific knowledge (Global-Tech, Inc. v. SEB S.A.,131 S.Ct. 2060, 2066, 2069-71 (2011)), and defeat a request to assign liability and impose damages for indirect infringement. (Commil USA, LLC v. Cisco Systems, Inc., 135 S.Ct. 1920, 1926-28 (2015)).
A written opinion is timely if obtained before launch of the accused products/services or diligently upon receiving notice of the alleged infringement.
A written opinion is competent if it considers the description and prosecution history in determining claim scope; discusses relevant U.S. legal standards; documents the relevant facts and how they were established, including, for a non-infringement opinion, by thorough investigation of the relevant characteristics of the allegedly infringing products/services; details a well-reasoned application of the law to the facts in reaching its conclusions; and is written by a technically and legally competent person, typically a U.S patent attorney at an outside firm.
A written opinion, even if timely and competent when drafted, may need updating, to account for changes in U.S. law and, if it addresses non-infringement, changes in the allegedly infringing products/services.
A timely and competent, and, if needed, updated, written opinion can prevent the award of enhanced damages and assignment of liability for indirect infringement in U.S. courts only if the accused infringer discloses the existence of the opinion and invokes reasonable reliance on its conclusions, actions which remove attorney-client confidentiality in regard to the contents and subject matter of the opinion.
In anticipation of such removal of confidentiality, it is prudent to minimize potentially damaging written communications with opinion counsel and critical to separate and isolate opinion counsel from litigation counsel. In re Seagate Tech., LLC, 497 F.3d 1360, 1373-76 (Fed. Cir. 2007) (en banc) (overruled on other grounds by Halo v. Pulse, 136 S. Ct. 1923). Further, opinion counsel and the decision maker who requested and relied on the written opinion should be prepared to face questioning by opposing litigation counsel.
In conclusion, after receiving notice of possible infringement of a U.S. patent, it is advisable to weigh the costs and benefits of engaging a U.S. patent attorney to provide a written opinion regarding non-infringement/invalidity.