WASHINGTON, D.C. (February 29, 2008) — McDermott Will & Emery is pleased to announce that on February 25 the Supreme Court of the United States denied the patent holder's petition for certiorari in the landmark case In re Seagate Technology LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc). The Supreme Court's action let stand the unanimous Federal Circuit decision overturning 24 years of precedent by establishing a new, more stringent standard for proving willful patent infringement, and its reaffirmance of the sanctity of the attorney-client privilege in the context of patent cases.
Prior to the August 2007 ruling, companies would typically obtain an opinion letter regarding the potential infringement from "opinion counsel" following an accusation of patent infringement. During trial, the company could waive privilege and rely on the opinion letter in court to defend against the claim of willful infringement. In Convolve, Inc. v. Seagate Technology LLC, the district court extended this waiver to include communications between Seagate and its trial counsel, McDermott Will & Emery. The district court also ordered that trial counsel's work product was subject to discovery. Seagate then petitioned to the Federal Circuit for a writ of mandamus vacating the district court's orders.
As argued by Seagate, the duty of due care standard improperly shifted the requirement to prove willful infringement to the defendant who had to then prove it did not willfully infringe. The Federal Circuit agreed with Seagate. It abolished the duty of due care standard and established a new test for proving willful infringement: a patentee must show by clear and convincing evidence that the defendant acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. Thus, the court held that the state of mind of the accused infringer was not relevant to the objective inquiry. It also held that there was no affirmative obligation to obtain opinions of counsel. With respect to the issues of attorney-client privilege and work product immunity, the Federal Circuit held that asserting the advice of counsel defense and disclosing opinions of opinion counsel do not constitute waiver of the attorney-client privilege for communications with trial counsel, nor does it waive work product immunity with respect to trial counsel. The Federal Circuit thus granted Seagate's petition for a writ of mandamus and remanded with instructions for the district court to reconsider its earlier rulings in light of the Federal Circuit’s decision.
McDermott's IP, Media & Technology Department is renowned for its trial and appellate experience. In fact, IP Law & Business' annual survey of law firms that filed the most cases ranks McDermott as one of the Top 10 most active IP litigation firms in the United States. Our lawyers are exceptionally experienced in managing and conducting complex intellectual property litigation including appeals and infringements concerning patents, trademarks and copyrights. Additionally, our intellectual property, media and technology practice is globally recognized with numerous U.S. and EU lawyers ranked among the leading practices by Chambers Global and Chambers USA.