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The Seagate Conundrum: Risks and Rewards of Raising the Defense of "Advice of Counsel" to a Charge of Willful Patent Infringement

Imagine that your company manufactures or sells a product in the United States, in competition with other companies that have patents on some or all of their products. Aware that your competitors have patent portfolios, your company retains outside counsel to investigate and advise whether the new product is likely to infringe any of the competitors’ patents in the relevant field of art. Assume your counsel investigates diligently, then gives you a competent written legal opinion, stating that your company’s product does not infringe upon the competitors’ patents; or, alternatively, that those patents are invalid. Your counsel opines that at least one  of the patents is unenforceable, based on the competitor having intentionally concealed known prior art from the patent office. Your company then introduces its product in the United States—and, of course, is promptly sued. In addition to asserting infringement, the competitor alleges that your company’s infringement is willful and consequently asks for treble damages. Should your company produce in discovery and disclose to the jury at  trial the opinions of its counsel to show that it reasonably believed either that the product did not infringe or that the patent was invalid or unenforceable? The answer may well depend on the Federal Circuit’s resolution of what the authors have come to think of as “the Seagate Conundrum.” ...