Opinion Letters Fight Back

From late last month comes the Federal Circuit's decision in Broadcom v. Qualcomm, which still has me scratching my head about the state of patent opinion letters in patent infringement lawsuits. The court's 2004 decision in Knorr-Bremse was viewed as making a significant change to the willful infringement equation, and caused many to rethink whether patent infringement (or, almost always, patent NON-infringement) opinions were still a necessary part of a comprehensive patent infringement defense. According to the Knorr-Bremse opinion, the absence of evidence that the infringer was relying on an opinion of counsel was no longer to be treated as an adverse inference in support of a willfulness finding.

The Broadcom decision claims that it "comports" with Knorr-Bremse. You decide.

The trial court in Broadcom instructed the jury to consider "all of the circumstances, including whether or not Qualcom obtained and followed the advice of a competent lawyer with regard to infringement" in considering whether to tag Qualcomm for willful infringement. The instruction continued:

"The absence of a lawyer's opinion, by itself, is insufficient to support a finding of willfulness, and you may not assume that merely because a party did not obtain an opinion of counsel, the opinion would have been unfavorable. However, you may consider whether Qualcomm sought a legal opinion as one factor in assessing whether, under the totality of the circumstances, any infringement by Qualcomm was willful."

The Federal Circuit considered this instruction, and opined that "the district court did not err in instructing the jury to consider 'all of the circumstances,' nor in instructing the jury to consider -- as one factor -- whether Qualcomm sought the advice of counsel as to non-infringement."

So what we're left with is a situation where the trial court is telling the jury, "Look, I'm not sayin' that the defendant HAD to get an opinion. Let's be very clear about that, okay? Nobody's sayin' the defendant HAD to get an opinion. But hey, well, 'ya know, ya might wanna think about it . . . I mean, if it HAD gotten an opinion, dontcha think we'd have seen . . . . ah, never mind."

The line between "no adverse opinion" and "you may consider whether" may turn out to be too fine to be practical. Tread with care.