Best Practices for Opinion Letters After Seagate and Qualcomm

A live 90-minute CLE webinar/teleconference with interactive Q&A
Sponsored by the Legal Publishing Group of Strafford Publications
Tuesday, March 9, 2010 ~ 1:00pm-2:30pm EST
Price: $297

Please note: You will be taken to the Strafford website to complete your order.

This CLE seminar will discuss opinion of counsel letters used in patent infringement suits, the impact of recent federal courts decisions, and attorney-client privilege issues. The panel will outline best practices for using opinions of counsel.

Description

Opinions of counsel are traditionally a first line of defense in the event of willful patent infringement claims. However, asserting that defense can put the attorney advice at issue and result in waiver of the attorney-client privilege.

While the Federal Circuit’s In re Seagate ruling seemed to downplay the importance of opinion letters in willful infringement cases, its more recent Qualcomm v. Broadcom ruling brought them back to the forefront.

Qualcomm held, in deciding whether a company induced infringement, a jury should consider evidence that the company failed to obtain an opinion letter from outside counsel.

Listen as our authoritative panel of IP attorneys examines the evolving standard for patent infringement claims and the use of opinions of counsel. The panel will discuss the issue of waiver of the attorney-client privilege and provide best practices for employing opinions of counsel post Seagate and Qualcomm.

Outline

• Standard for willful infringement and use of opinions of counsel
  • In re Seagate and the objective recklessness standard
  • Qualcomm v. Broadcom
  • Importance of competent opinion of counsel in defending willful infringement allegations
  • Reliance on opinions of counsel
  • Updating opinions
  • Changes in how opinions are used
• Waiver
  • Scope of discovery
  • Privilege waiver for opinion counsel and trial counsel
  • Privilege waiver for in-house counsel
  • Other in-house personnel and in-house investigations
  • Waiver of work product immunity
• Court treatment
  • Application of Qualcomm v. Broadcom
  • Application of Seagate
• Best practices post-Qualcomm and Seagate
  • Implications for opinion of counsel practice
  • Rethinking defending against willfulness claims
  • No affirmative duty to get opinion, but proceed with caution if monitoring others’ patents
  • When should corporate counsel now seek outside opinions to protect themselves from willful infringement claims?
  • Cost-benefit analysis

Benefits

The panel will review these and other key questions:

• What is the practical impact of the recent Federal Circuit decisions on utilizing opinions of counsel?
• How does Seagate’s “objective recklessness” standard impact legal advice on proactive clearance analysis for product planning and strategic portfolio development?
• How can counsel reconcile the seemingly contradictory decisions in Seagate and Qualcomm?
• Under what circumstances should corporate counsel seek outside opinions of counsel to protect their company from infringement claims?

Following the speaker presentations, you’ll have an opportunity to get answers to your specific questions during the interactive Q&A.

Faculty

Sanford E. Warren Jr., Partner
Akin Gump Strauss Hauer & Feld, Dallas
He practices intellectual property litigation, including successful defense of patent infringement suits, in the medical device, electronic, chemical, semiconductor and telecommunications fields. He also manages worldwide trademark portfolios in the aviation, chemical and health fields.

Richard S.J. Hung, Partner
Morrison & Foerster, San Francisco
He focuses on intellectual property litigation and counseling. He has litigated a variety of technology matters and advises clients on strategic patent issues. He also has been involved in trade secrets litigation in state court and in commercial arbitration before the American Arbitration Association.

Register Today!
Price covers an unlimited number of staff at your office location. Can’t participate in the live seminar? A CD of the full event proceedings, including Q&A and PDF files of all handouts, will be available 10 days after the seminar.

Continuing Legal Education
Continuing Legal Education credits are granted for an additional $65 per person. Please refer to the options on the order page to take advantage of these credits.

Please note: You will be taken to the
Strafford website to complete your order.