Edward Reines, president of the Federal Circuit Bar Association, called it “a very pro-accused infringer decision” (as reported by our sister paper The Recorder). But let’s be rather blunter: Yesterday’s ruling by the U.S. Court of Appeals for the Federal Circuit in In re Seagate Technology is a very pro-infringer decision. Seagate makes it less likely that patent infringers will be found liable for willfulness—and thus less likely to be hit with treble damages.
Seagate establishes that waiving the privilege for the defense’s opinion counsel (hired to opine on whether the accused did infringe) does not waive the privilege for the defense’s trial counsel as well. Last month in Legal Times, Timothy Teter of Cooley Godward Kronish analyzed why such a decision would strike the right balance between protecting patents against scofflaws and preserving the right to the best efforts of trial counsel.
In its unanimous en banc decision, the Federal Circuit also wrote that to prove willfulness, the patent owner must show that the infringer acted “despite an objectively high likelihood that its actions constituted infringement.” The new standard may lead to fewer accused infringers seeking opinion counsel.
So maybe it’s a very anti-opinion counsel decision.
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