Advice of Counsel Defense in Patent Litigation and Protecting Attorney-Client Privilege
Limiting Scope of Discovery, Safeguarding Confidential Communications and Information
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Thursday, December 15, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will provide patent counsel with an examination of the role of the advice of counsel defense in patent infringement cases and the temporal and subject matter scope of the potential waiver of the attorney-client privilege and work product protection when an accused infringer relies upon such a willfulness defense. The panel will also discuss recent decisions and offer guidance to counsel and companies for protecting privileged communications and attorney work product when relying upon the advice of counsel defense.
Mr. Lavenue’s practice focuses on patent trial litigation, including 19 bench or jury trials, and on creating and managing large patent portfolios. With experience in over 200 patent cases, he has managed or served as first chair in numerous district court litigations, including more than 60 cases in the E.D. Texas, almost a dozen patent infringement cases and/or matters under Section 1498(a) in the U.S. Court of Federal Claims, more than a dozen disputes under Section 337 before the U.S. International Trade Commission, and multiple arbitrations. Mr. Lavenue has particular insight into patent disputes involving international discovery under Section 1782. He has been involved in more than a dozen granted 1782 proceedings throughout the U.S., all with 100% grant rate. His broad client base spans an array of industries from aerospace to automotive to financial services to medical devices.
Drawing on strong technical skills and extensive work with engineers, Mr. Cooper blends his fascination with science and his love of the law to protect the world’s leading innovators. He litigates complex patent, copyright, trade secret, and antitrust matters for Fortune 500 and cutting-edge technology clients alike in the digital communications, computer networking, semiconductor, internet, data management, software, software design, hardware, telecommunications, and security spaces. Mr. Cooper also counsels clients on complex licensing obligations, such as portfolios containing Standards Essential Patents (SEPs) encumbered by obligations to license the patents on Fair, Reasonable and Non-Discriminatory (FRAND) terms.
Ms. Hadzimehmedovic brings extensive experience litigating complex patent cases in U.S. district courts, the ITC, and the International Chamber of Commerce. She has litigated significant patent matters for industry-leading technology companies in diverse technology areas, including computers; semiconductor devices, processing, and packaging; software; pharmaceuticals; Wi-Fi- and location services; content delivery network services; and medical devices. Prior to practicing law, Ms. Hadzimehmedovic worked as a scientist and technical editor for the United States Pharmacopeia, an official standards-setting authority for medicines and other healthcare products.
The Supreme Court's decision in Halo Electronics Inc. v. Pulse Electronics Inc., 136 S. Ct. 1923 (2016) significantly changed the standard for establishing a claim of willful patent infringement. Opinions of counsel are a more important factor that courts examine when exercising their discretion and award enhanced damages.
What Halo failed to address, however, is the interplay between reliance on an opinion of counsel defense to rebut a charge of willful infringement and the scope of a waiver of the attorney-client privilege and work product immunity.
Since Halo, several federal district courts have addressed privilege and work product waiver when the advice of counsel defense is asserted. These district courts considered several important issues, including whether advice-of-counsel waivers: (1) are limited to pre-litigation conduct; (2) can extend to communications between opinion counsel and trial counsel; (3) can extend to communications between inside counsel and outside counsel; and (4) may result in the waiver of privilege concerning collateral issues.
Listen as our authoritative panel of patent attorneys examines the issues of privilege in the context of opinions of counsel and the use of the advice of counsel defense. The panel will review recent decisions and offer best practices for limiting the scope of discovery of communications and work product related to the advice of counsel defense and protecting the privilege.
- Privilege in the context of opinions of counsel and the use of the advice of counsel defense
- Recent decisions and guidance for trial counsel
- Best practices
- Limiting the scope of discovery of communications and work product
- Protecting the privilege
The panel will review these and other high priority issues:
- What is the practical impact of recent decisions on utilizing opinions of counsel in defense of willful infringement while protecting privileged communications and attorney work product?
- What considerations regarding possible waiver of the attorney-client privilege and work product immunity should counsel consider before asserting the advice of counsel defense in patent infringement litigation?
- What are the best practices for counsel and corporations to preserve the attorney-client privilege and work product immunity?
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