The Aftermath of Knorr-Bremse

According to an article by Paul Devinsky and D. Sean Trainor, the Federal Circuit’s decision in Knorr-Bremse does not ameliorate the prudence of obtaining an opinion of counsel when faced with a non-frivolous patent infringement allegation. Whether the accused infringer obtained a competent opinion of counsel is now simply one factor to consider in this analysis. Other factors include deliberate copying, concealing infringing activity, infringement where the infringer knows it has only frivolous defenses, infringement designed to injure a competitor and whether the infringer, when confronted with the knowledge of the patent, formed a good-faith belief as to invalidity or non-infringement.

With the demise of the adverse inference rule, many defendants may now choose not to rely on exculpatory opinions (even if they have one). Thus, patentees will now have to focus discovery efforts more on actions taken by the accused infringer to avoid infringement and the other factors listed above. Indeed, the more factual support the patentee can garner through the discovery process tending to establish such willfulness factors the more likely an accused infringer will confront the dilemma of whether to waive privilege and rely on an opinion of counsel. However, in future disputes over the scope of the waiver, courts will now look to the traditional jurisprudence of the regional circuit regarding the scope of the remaining privilege, not to case law articulating special (and intrusive) jurisprudence which was born out of the adverse inference rule regarding litigation of willful patent infringement allegations.