2015 AIPLA Annual Meeting
Chemical Practice Committee
October 23, 2015
Patent Opinions
J. Scott Larson
Braskem
550 Technology Drive
Pittsburgh, PA 15219
Phone: 412.208.8141
jon.larson@braskem.com
Edwin (Ted) V. Merkel
LeClairRyan, A Professional
Corporation
70 Linden Oaks, Suite 210
Rochester, New York 14625
Phone: 585.270.2104
edwin.merkel@leclairryan.com
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Overview
Why request a formal [external] patent
opinion?
 What is the goal?
 Types of patent opinons
 Process (client to counsel)
 Communication
 Risk Mitigation
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Why Request a Formal [external]
Patent Opinion?
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Identification of issues pertaining to
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Patentability
3rd party rights
Variations among national laws
IP strategy
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Why Obtain an Opinion?
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Patentability and Freedom-to-Operate
Opinions
◦ Understand your investment in a highly
patented technology area
◦ Create an awareness of the patent landscape
to guide decision-making
◦ Design-around before launching product
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Why Obtain an Opinion? (cont.)

Non-Infringement and Invalidity Opinions
◦ In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007):
“[T]o establish willful infringement, a patentee must show by clear and
convincing evidence that the infringer acted despite an objectively high
likelihood that its actions constituted infringement of a valid patent.”
◦ Competent opinion is a strong defense to willful
infringement; evidence that alleged infringement was
not willful
• Avoidance of enhanced damages under 35 U.S.C. § 284
◦ Supreme Court to review willful patent infringement
test this term (under context of § 284)
• Halo Elecs., Inc. v. Pulse Elecs., Inc., No. 14-1513 (cert. granted Oct.
19, 2015)
• Stryker Corp. v. Zimmer, No. 14-1520 (cert. granted Oct. 19, 2015)
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Why Obtain an Opinion? (cont.)

Non-Infringement and Invalidity Opinions (cont.)
◦ Failure to obtain an opinion may not be used to prove
willful infringement (35 U.S.C. § 298)
◦ Induced infringement requires knowledge that the
induced acts constitute infringement. Global-Tech
Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011).
• Non-infringement opinion should be effective to negate
knowledge requirement
• Invalidity opinion, however, is ineffective to negate the knowledge
requirement. Commil USA, LLC v. Cisco Systems Inc., __ U.S. ___,
135 S. Ct. 1920 (2015).
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What is the goal?
Identification of patentable features over
the known art
 Mitigate infringement risks
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◦ Known or unknown patents
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Evaluation of position (defensive or
offensive)
◦ Non-Infringement vs. Infringement
◦ Invalidity vs.Validity
◦ Unenforceability vs. Enforceability
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Types of Opinions
 Patentability
 Freedom-to-Operate
(FTO)
 Defensive/Offensive Opinions
◦ Non-Infringement/Infringement
◦ Invalidity/Validity
◦ Unenforceability/Enforceablity
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Types of Opinions (cont.)
 Patentability Opinion
◦ Should we try to patent a new technology?
◦ Search for published prior art
• Institutional knowledge of the subject matter
• Professional search agencies
◦ Review public use/sale
◦ Caveat: non-published (secret) prior art will
not come up in a search
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Types of Opinions (cont.)
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FTO Opinion
◦ Can I practice my invention or sell my products without
a high risk of patent infringement?
◦ Before making a significant investment in the technology
◦ Need a clear and detailed description of the technology
◦ Search for enforceable issued patents in jurisdiction
◦ Analyze issued claims against the technology
◦ Update the opinion as technology changes during
development
◦ Only need to address independent (broadest) claims
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Types of Opinions (cont.)
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FTO Opinion (cont.)
◦ May also search for pending patent applications
• Published patent applications
• Identify in an opinion and, if relevant, monitor
prosecution
• Update opinion as new patents issue
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Types of Opinions (cont.)
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Non-Infringement Opinion
◦ Often, but not always, in response to a legal threat of
infringement
◦ Used to provide assurance to a company that their
product/technology does not infringe
◦ Similar to FTO, but may not require a search
◦ Only need to address independent (broadest) claims
◦ May be combined with an invalidity/unenforceability
opinion
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Types of Opinions (cont.)
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Invalidity Opinion
◦ Is an issued patent valid?
• For a patent you may want to purchase/license
• For a patent that is (or may be) asserted against you
◦ Requires a prior art search
◦ Every claim of a patent should be addressed
◦ Conclusion may be that some or none of the issued
claims are invalid
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Types of Opinions (cont.)
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Unenforceability Opinion
◦ Evidence of fraud/inequitable conduct during prosecution
◦ Much less likely to be aware of this prior to
litigation/discovery
• If closely monitoring competitor patents (U.S. and foreign), then
perhaps you may uncover something before litigation commences
◦ Taints the whole patent; no claims are enforceable
◦ BUT: could be curable (before litigation commences)
using supplemental examination
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Types of Opinions (cont.)
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Offensive/Defensive Usage
◦ Offensive: Infringement,Validity, Enforceability
• Meet a Rule 11 obligation
• Provide a roadmap for litigation
• Due diligence
◦ Defensive: Non-infringement, Invalidity,
Unenforceability
• Establish the state of mind of an accused infringer
(to avoid willfulness)
• Provide a roadmap for product development, i.e.,
design-around
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Timing: When to Obtain an
Opinion

Obtain an opinion as early as possible
◦ Patentability and FTO opinions
• As soon as the technology is adequately defined that a
meaningful search can be conducted
• Before a significant investment in resources
◦ Validity and Non-Infringement Opinions
• Soon after receiving notice or discovery of patent
• Before litigation begins
• Post-Seagate: There is no affirmative duty to obtain a
competent opinion
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If it is a close call, get an opinion
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Communication:
Flow of Information
Attorney provided all details (scenarios, formulations, known-art, etc.)
Patent and/or Literature Searches
Analysis and Risk Assesment
Communication to appropriate team(s) with issue management
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Communication: Opinion Format
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Oral/Written
◦ An Oral Opinion
 Could be used as a “preliminary” opinion
 Valuable for helping make a quick decision
 Follow-up with written opinion
◦ A Written Opinion
 Greater evidentiary value
 More expensive
 Requires more time
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Can Risk be Mitigated?
Are there pending patent applications that
could improve IP position?
 Potential for future commercially relevant
patent applications
 Can granted IP be improved? (laws vary
by nation)
 Orange book
 Leverage in deal structures (options,
royalties, etc.)
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Opinion Standards:
What is a Competent Opinion?
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Thorough
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Reviews prosecution history and cited art
Construes the claims
Is well-reasoned; not conclusory
Cites to relevant, up-to-date law and applies the law to the facts
Addresses doctrine of equivalents without being conclusory
Honest
◦ More likely to speak in probabilities than certainties
◦ Does not need to be accurate to be competent
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By whom?
◦ Attorney, all types; agent, only patentability
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Issues of Privilege, Immunity, and
Waiver

An opinion may be protected by attorney-client
privilege
◦ The privilege is waived once a party announces it will rely on an
opinion of counsel
◦ Waiver applies to all other communications relating to the same
subject matter
◦ No waiver for separate trial counsel
• Opinion Counsel = business decisions; accused party’s state of mind
• Trial Counsel = strategic litigation matters
◦ Accidental loss of confidentiality to 3rd parties
• Showing the opinion to a 3rd party during licensing deal
• Unintentional waiver
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Thank you
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