Opinion of Counsel Relative to Question of Active Inducement

In Broadcom Corp. v. Qualcom Inc. (September 24, 2008), the Federal Circuit held that the failure to procure a noninfringement opinion may be probative of intent in the context of active inducement.

According to the opinion by Circuit Judge Linn,

Because opinion-of-counsel evidence, along with other factors, may reflect whether the accused infringer "knew or should have known" that its actions would cause another to directly infringe, we hold that such evidence remains relevant to the second prong of the intent analysis. Moreover, we disagree with Qualcomm’s argument and further hold that the failure to procure such an opinion may be probative of intent in this context. It would be manifestly unfair to allow opinion-of-counsel evidence to serve an exculpatory function, as was the case in DSU itself, see 471 F.3d at 1307, and yet not permit patentees to identify failures to procure such advice as circumstantial evidence of intent to infringe. Accordingly, we find no legal error in the district court’s jury instructions as they relate to inducement.

Thus, the district court did not err in instructing the jury to consider "all of the circumstances," nor in instructing the jury to consider—as one factor—whether Qualcomm sought the advice of counsel as to non-infringement. . . .