Infringement Opinions after Knorr-Bremse

Some observers have speculated that the Knorr-Bremse decision ruling could lead to less opinion work at patent law firms. However, Jim Kayden, of Thomas, Kayden, Horstemeyer & Risley in Atlanta flatly rejected that view in a recent article from the September 16, 2004 issue of IP Law Bulletin:

"To the contrary, it can benefit boutique patent firms by removing a 'mythical' conflict issue used by general practice firms to try and pry away the potentially lucrative litigation work. After the work that goes into rendering an opinion, at which boutique patent firms are particularly adept, no other firm is better prepared or qualified to litigate, should the need arise. While a good advocate's job is to keep his clients out of court, the preparation of an exculpatory opinion is excellent preparation for litigation. The nature of opinions may change a bit, as clients won't feel compelled to seek out 'window dressing' opinions just to avert a judgment of willful infringement. But clients will still need a quality assessment of whether their products or services infringe a patent," he said.

In fact, such "infringement risk assessments" are usually much more valuable to clients than a typical non-infringement opinion. By presenting options for minimizing the legal risk of being held liable for money damages, a client can then weigh those options againt any commercial risk associated with each option. Since risk tolerance will vary between clients, and often in proportion to the expected profits for a particular activity, this approach allows attorneys to become participants in their client's problem-solving process, rather than just gate-keepers to the Tower of (Legal)Babel.