Expanding value of opinion of patent counsel

Posted On :June 27th, 2013 By James Yang

An opinion of patent counsel regarding patent infringement is relevant to the intent of an alleged infringer and may be useful to mitigate trebling of damages.  This case expands the value of opinion of counsel to also mitigate liability for inducement of infringement.

Patent infringement may be found through direct infringement.  This occurs when a person personally makes, uses, sells, offers for sale, or imports the patented product into the United States.  These acts when covered by a claim of a patent constitute direct patent infringement.  However, it is sometimes difficult to develop your patent so that your competitors would be directly infringing your patent.  As a work around, the patent would have to be crafted so that the end users or the customer would be infringing on the patent.  In this scenario, your competitor would be indirectly infringing your patent.   There are two forms of indirect infringement, namely, contributory infringement and inducement of infringement.  Inducement of infringement occurs when the alleged infringer has knowledge that the induced acts constitute patent infringement.  The inducing infringer isn’t directly infringing the patent but is aiding someone else to directly infringe the patent.

The case of Commil v. Cisco involved whether Cisco could not be liable for inducement of infringement because Cisco had an opinion of patent counsel opining that Commil’s patent is invalid.  In other words, could the opinion of patent counsel show that Cisco couldn’t have had the requisite specific intent to induced another entity or person to commit acts that would constitute patent infringement.  The court held that the opinion of patent counsel indicating that the patent at issue is invalid could show that the alleged infringer did not have the requisite intent for inducement of infringement, since the opinion of patent counsel speaks to the intent of the infringer.

Practically speaking, opinions of patent counsel used to be required when entering a market with knowledge of a patent.  Otherwise, the court would presume that the defendant if found to directly infringe a patent infringed the patent willfully.  The result would be a trebling of damages.  Currently, the courts no longer presume such willfulness.  Nonetheless, it is still useful to obtain an opinion of counsel exculpating the defendant of any ill intent or willfulness to infringe a patent.  An opinion of counsel could also show no inducement of infringement if the opinion indicating that the proposed acts of the direct infringer is not infringing the patent.  How could one have the intent cause the third party to infringe a patent if the proposed acts of the third party are believed to be non infringing.  The Commil v. Cisco case expands the value of an opinion of counsel to additionally mitigate liability of inducement of infringement based on invalidity of the patent.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

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Posted in: Active inducement of infringement, Avoiding patent infringement, Defense to patent infringement, Indirect infringement, Infringement, Invalidity, IP enforcement

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