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ARTICLE · 01 SEPTEMBER 2023

Best Practices For Atty-Client Privilege In Patent Litigation

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Under Title 35 of the U.S. Code, Section 284, a victorious patent owner in a patent infringement suit may seek an award of up to three times the damages award — treble damages — if the patent owner proves...

United StatesIntellectual Property
Lionel Lavenue
Lionel Lavenue
Joseph Myles
Joseph Myles
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Under Title 35 of the U.S. Code, Section 284, a victorious patent owner in a patent infringement suit may seek an award of up to three times the damages award — treble damages — if the patent owner proves the infringer's conduct was willful.

In 2016, the U.S. Supreme Court's ruling in Halo Electronics, Inc. v. Pulse Electronics, Inc. brought significant changes to the landscape of willful infringement.1

Halo underscored the importance of the accused infringer's post-discovery actions concerning a competitor's patent, highlighting the critical role of timing in determining willfulness.

To mitigate the risk of treble damages, companies often seek legal opinions, such as noninfringement and invalidity opinions, to demonstrate that they acted in good faith to avoid infringement.

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