As a strategy to help avoid a finding of willful patent infringement and the resulting threat of enhanced damages, pre-lawsuit opinion letters are back.
That conclusion emerges upon considering case law that developed during the five years since the Supreme Court decided Halo Elecs., Inc. v. Pulse Elecs., Inc. There, the Supreme Court rejected a 2007 decision by the U.S. Court of Appeals for the Federal Circuit (In re Seagate Tech., LLC), which had allowed an infringer to escape a willfulness finding by advancing a reasonable defense at trial, thereby severely downgrading the importance of opinions of counsel in risk mitigation.
As explained in greater detail in the linked article, post-Halo decisions confirm that the Court's rejection of Seagate restored opinion letters to prominence, to the extent that they now factor in both a jury's willfulness analysis and a judge's consideration of damages enhancement resulting from any willfulness finding. In the post-Halo world, anyone confronting the question of whether a product or process might infringe another's patent ought to know that a competent opinion of patent counsel certainly matters if the situation ever escalates into litigation. If presented as evidence at trial for concluding that the patent in question is not infringed or is invalid, such an opinion can make a big difference.
Upon any willfulness finding by the jury, a presiding judge determines whether to enhance any damages awarded by the jury and if so, by how much, up to three times under a patent damages statute. Whether the accused infringer obtained a patent attorney's competent noninfringement / invalidity opinion stands as a factor not only in a jury's totality-of-the-circumstances assessment of whether any infringement it found was willful, but also in a multi-factor enhancement analysis that the judge undertakes if the jury reaches a willfulness verdict.
One final point - and it proves a crucial one - those who decide to move forward with obtaining a patent opinion letter need to get that opinion before any litigation occurs, or else it likely won't do any good. A 2019 Federal Circuit decision agreed with the trial court's exclusion from evidence of an attorney's opinion rendered after the lawsuit was filed. That is largely because under Halo, “culpability is generally measured against the knowledge of the actor at the time of the challenged conduct.”