• Attorney Opinions Regarding Infringement and Validity of Patents: Back in Vogue
  • August 4, 2016 | Authors: Kenneth D'Alessandro; Jeffrey G. Sheldon
  • Law Firms: Leech Tishman - Pittsburgh Office; Leech Tishman - Pasadena Office
  • In the past, in patent matters regarding validity and infringement, it has been the general consensus among patent attorneys that a formal written attorney opinion was usually not needed. This was due to the difficulty of a patentee in proving willful infringement in order to receive enhanced damages and attorney fees, and the difficulty for defendants sued for patent infringement in collecting their attorney fees when victorious.

    In view of two recent U.S. Supreme Court decisions, this is no longer the situation. One decision makes it easier for patent owners to collect increased damages and attorney fees from patent infringers (Halo Electronics, Inc. v. Pulse Electronics, Inc., --- U.S. --- (2016)). The other decision makes it easier for a defendant sued for patent infringement to obtain an award of its attorney fees from the plaintiff (Octane Fitness v. Icon Fitness, 572 U.S. --- 2014)).

    In order to reduce possible exposure to either an award of increased damages and attorney fees, Leech Tishman recommends obtaining a competent written opinion of counsel that the activities in question do not amount to patent infringement, because there is no infringement and/or because the claims are invalid. A well-written opinion can help avoid a finding of willful infringement and the possibility of paying up to treble damages and the patentee’s attorney fees.

    On the other side of the equation, a competent attorney-written opinion, by someone other than litigation counsel, can help avoid a losing patentee having to pay the attorney fees of the alleged infringer.

    As Benjamin Franklin stated: “An ounce of prevention is worth a pound of cure.”