Patent Noninfringement, Pre- and Post-Halo

By Dan Cleveland
Fennemore Craig

The U.S. Supreme Court decision in Halo Electronics has fundamentally changed the landscape of willful patent infringement analysis. Practically speaking, the significance of this change will affect your practice and it is important to understand the history of noninfringement opinions defining risk analysis leading up to Halo.
RISK ANALYSIS PRE-HALO
Three seminal Federal Circuit opinions laid the foundation for mitigating the risk of enhanced, treble damages for willful patent infringement and the award of reasonable attorney fees.
Underwater Devices greatly eased the burden of showing willfulness. The court imposed an “affirmative duty” to seek a noninfringement opinion upon receiving notice of infringement.
This created a small panic, resulting in large amounts of patent noninfringement work. Knorr-Bremse weakened the duty, recognizing that unintentionally created negative consequences in the attorney-client relationship and, consequently, “the failure to obtain an exculpatory opinion of counsel shall no longer provide an adverse inference or evidentiary presumption.”

To read this story and other complete articles featured in the April 3, 2017 print edition of Law Week Colorado, copies are available for purchase online.