Advocacy or Counsel: The Continuing Dual Role of Written Infringement Opinion Letters and the Failure of Knorr-Bremse to Confine the Role of Patent Attorneys Issuing Written Infringement Opinion Letters

Georgetown Journal of Legal Ethics, The, Summer 2005 by Shipsides, Geoffrey

I. INTRODUCTION

In the practice of United States patent law, one of the most lucrative common tasks assigned to patent attorneys is the task of issuing a written infringement opinion letter to a client who is potentially infringing on a patent.1 The potential infringer with actual notice of another's patent rights "has an affirmative duty to exercise due care to determine whether or not he is infringing," which usually includes "the duty to seek and obtain competent legal advice from counsel before the initiation of any possible infringing activity."2 This duty translates into the need for a potential infringer to hire a patent attorney to issue a written infringement opinion letter in order to avoid a finding of willful infringement.3 A finding of willful infringement entitles the patent holder to treble damages.4 The purpose behind the increased damages for willful infringement is to deter "deliberate or wanton disregard for the property rights of a patentee."5 The due care requirement encourages the potential infringer "to seek legal help before continuing with their business plans."6 These infringement opinion letters ostensibly have the purpose of giving the potential infringer advice as to whether they are infringing the patent in question. The infringement opinion has the second potential use of being produced as evidence at trial of the potential infringer's state of mind for the determination of willful infringement.7 Patent attorneys, aware of this possible evidentiary use of infringement opinion letters, know that the letter is also the place to advocate for their client's position of non-infringement.8 This dual role of the patent infringement opinion letter puts the patent attorney in a position where he must either ignore one of his functions, either as a counselor or as an advocate, or must act dishonestly in order to fully serve the client.9

The due care requirement to obtain written infringement opinions has, however, degenerated into a game amongst the repeat players.10 Patent holders routinely send letters out to potential infringers alerting them to their patent rights, thus triggering the due care requirement for these various potential infringers to obtain written opinions.11 The potential infringer then hires a patent attorney to issue an opinion with the unstated expectation that the patent attorney will not find infringement.12 The willful infringement/written opinion game is entirely corrupt, forcing patent attorneys to write dishonest opinions that are really a tool for advocacy rather than objective predictions of infringement.13 Attorneys must choose between being honest and out of work, being dishonest in writing while potentially contradicting themselves orally, or not fully serving the needs of their clients.14 Patent attorneys profit from this game because it forces potential infringers to pay tens or even hundreds of thousands of dollars15 to obtain these favorable written opinions. These dishonest opinions might further spur unsophisticated clients to engage in inadvisable litigation; wasteful litigation that lines the pockets of patent attorneys.16

The Federal Circuit recently had the opportunity to end this game by eliminating the due care requirement when it heard Knorr-Bremse en bane.17 Prior to Knorr-Bremse, the court could infer that an accused infringer who did not produce a written infringement opinion had either neglected the due care requirement or that the accused infringer had obtained an infringement finding opinion, either way a damning adverse inference.18 In Knorr-Bremse, the Federal Circuit made a point of ending adverse inferences, reasoning that they damaged the attorney-client relationship, but failed to recognize the hopelessness of having any meaningful attorney-client relationship as long as the attorney is producing evidence for their client in the process of giving their client advice.19 The Federal Circuit failed to recognize the resulting game from allowing potential infringers to use the "advice of counsel" defense.20 The game is a windfall of extra billable hours given to patent attorneys at the expense of the public, as potential infringers are forced to order unnecessary written opinions to protect themselves against a finding of willful infringement.21 While an inquiry into the subjective knowledge of a potential infringer might seem the more fair way to determine willfulness, it "may actually make infringement more likely by discouraging candid attorneyclient communications."22 Willfulness should be determined using an objective standard to erase the incentive for clients to waive their attorney-client privilege; thereby encouraging honest communication between the attorney and the client.23 The patent system should be structured to encourage invention, innovation, and disclosure, rather than to line the pockets of patent attorneys.

II. KNORR-BREMSE: A MISSED OPPORTUNITY

Knorr-Bremse offered the ideal opportunity for the Federal judiciary to finally end this willful infringement/written opinion game, but the majority failed to overturn the due care requirement.24