In 2007, the willfulness inquiry changed significantly with the Federal Circuit’s seminal decision, In re Seagate. In addition to establishing a new twoprong test for willful infringement, the Federal Circuit in Seagate abolished the Underwater Devices2 duty of care standard and ‘‘reemphasize[d] that there is no affirmative obligation to obtain opinion of counsel.’’ Additionally, the America Invents Act in 2011 provided that the failure to obtain advice of counsel may not be used to prove that the accused infringer willfully infringed the patent in suit.

Despite these developments, accused infringers continue to consider and obtain opinions of counsel to rebut a claim of willful infringement. Reliance on advice of counsel remains relevant to the second prong of the Seagate inquiry—namely the subjective prong.

Originally published in Bloomberg BNA’s Patent, Trademark & Copyright Journal on October 3, 2014.