A tension exists between opinions of counsel, willful infringement, and the attorney-client privilege. 1 Patent infringement defendants face a vexing decision. Entering into evidence an opinion of counsel declaring noninfringement or invalidity of an asserted patent acts as a strong defense to willfulness. However, asserting this defense requires waiving attorney client privilege. If a defendant chooses not to assert the opinion of counsel defense to preserve the attorney-client privilege, he risks facing enhanced damages if a jury finds willful infringement.
Law regarding willfulness and opinions of counsel changed significantly when the Federal Circuit issued In re Seagate in 2007. In this watershed en banc decision, the Federal Circuit overruled its own precedent regarding willful infringement. Prior to Seagate, the Federal Circuit explicitly imposed an affirmative duty on potential defendants to obtain an opinion of counsel per Underwater Devices v. Morrison Knudsen Co. The Seagate court replaced this duty of care standard with an objective recklessness standard. This new standard for willful infringement “abandon[ed] the affirmative duty of due care, . . . [and emphasized] that there is no affirmative obligation to obtain opinion of counsel.”