In an extraordinary decision, the U.S. Court of Appeals for the Federal Circuit, ordered consideration by the entire Court of an SSJR appeal covering the appropriateness of inferring willful infringement for failure either to obtain or to disclose an attorney opinion. The current law, which SSJR’s appeal seeks to overturn, has been widely criticized by the bar.
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SSJR Wins Appeal Restoring Attorney-Client Privilege to Patent Law
14 September 2004
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SSJR Wins Appeal Restoring Attorney-Client Privilege to Patent Law
14 September 2004
Documents
- Amicus brief, American Bar Association
- Amicus brief, American Intellectual PLA
- Amicus brief, Association of Corporate Counsel
- Amicus brief, Association of Patent Law Firms
- Amicus brief, Association of the Bar of NYC
- Amicus brief, Bar Association of the District of Columbia
- Amicus brief, Bea Systems and Novell
- Amicus brief, Biotechnology Industry Organization
- Amicus brief, City of Chicago
- Amicus brief, Computer Associates International
- Amicus brief, Conejo Valley Bar Association
- Amicus brief, Federal Circuit Bar Association
- Amicus brief, Generic Pharmaceutical Association
- Amicus brief, Houston Intellectual PLA
- Amicus brief, Intellectual Property Owners Association
- Amicus brief, Lexington Patent Policy Group
- Amicus brief, Microsoft Corp
- Amicus brief, NY Intellectual PLA
- Amicus brief, Public Knowledge
- Amicus brief, Public Patent Foundation
- Amicus brief, San Diego Intellectual PLA
- Amicus brief, Securities Industry Association
- Amicus brief, Semiconductor Industry Association
- Amicus brief, US Council for International Business
- Appellants' en banc brief
- Appellants' opening brief
- Appellants' reply brief
- Appellee's en banc brief
- Appellee's reply brief
- District Court amendment
- District Court findings
- District Court judgment
- District Court opinion
- District Court remand opinion
- Federal Circuit en banc order
- Federal Circuit oral argument order
- On Remand defendants' brief
- On Remand plaintiff's brief
- On Remand plaintiff's reply brief
SSJR Argues En Banc Appeal on Inference of Willful Patent Infringement
15 November 2003
TOPIC TAGS for this article: > Landmark cases > Litigation
SSJR Wins Appeal Restoring Attorney-Client Privilege to Patent Law
15 November 2003
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.
SSJR Wins Appeal Restoring Attorney-Client Privilege to Patent Law
15 November 2003
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.