In a virtually unanimous opinion, the Federal Circuit has overruled its contrary precedent in holding that no adverse inference may be drawn against an alleged infringer from either failure to obtain or produce an exculpatory opinion of counsel. Judge Newman wrote the emphatic majority opinion, which explained that implementation of its adverse inference precedent had resulted in inappropriate burdens on the attorney-client relationship.
The Court specifically ruled that it is no longer appropriate for a trier of fact to draw an adverse inference with respect to willful infringement when attorney-client privilege and/or work-product privilege is invoked by a patent infringement defendant, or when the defendant had not obtained legal advice. The Court also ruled that a substantial defense to infringement is not itself sufficient to defeat liability for willful infringement even if no legal advice has been secured.
The Court explicitly did not decide whether a trier of fact can or should be told whether or not an infringement defendant consulted counsel.
The willfulness finding was vacated and the case was remanded to the District Court for redetermination of the willfulness issue under a totality of circumstances without benefit of the inference.
On remand, the District Court ordered the parties to submit briefs on the willfullness issue. That briefing is complete. Both sides are seeking attorney fees.
