Opinions of Counsel Ride Again: Federal Circuit Finds Opinions Relevant to Intent for Induced Infringement in Broadcom v. Qualcomm

Morrison & Foerster LLP
Contact

As the Federal Circuit reaffirmed in Seagate,[1] opinions of counsel are not required to fend off allegations of willful infringement.[2] But in Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683 (Fed. Cir. 2008), the Federal Circuit recently held that such opinions are relevant to intent to induce infringement under 35 U.S.C. § 271(b).

Because inducement and willfulness both require intent, there is some overlap in relevant evidence as well as jurisprudence between these two issues. But in separate en banc opinions in the last couple of years, the Federal Circuit has adopted different quanta of intent necessary to establish inducement and willfulness. In DSU,[3] the court required proof of “specific intent” to induce infringement, including knowledge of the patent; mere knowledge of another’s acts subsequently found to constitute direct infringement were deemed insufficient.[4] Although the court noted that the alleged inducer in DSU had obtained non-infringement opinions as part of the evidence considered by the jury, which returned a verdict of no inducement, the Federal Circuit did not directly discuss the role of opinion of counsel evidence in DSU.

Please see full update for more information.

LOADING PDF: If there are any problems, click here to download the file.

Written by:

Morrison & Foerster LLP
Contact
more
less

Morrison & Foerster LLP on:

Reporters on Deadline

Related Case Law

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.