On March 14, 2014, the Federal Circuit issued its opinion in SDI v. Imation Corp. (available here). Several important things to note regarding the advice of counsel defense:
- A good-faith belief of noninfringement can be established by reliance on advice of counsel obtained after learning of the asserted patent.
- “Where the record reveals no basis for a good-faith belief sufficient to thwart liability, summary judgment of no liability cannot stand. Whether SDI had such a good-faith belief prior to receiving the opinion of counsel is a triable issue for the jury to consider. Therefore the summary judgment incorrectly absolves SDI of liability from December 10, 2008 until May 22, 2009, when SDI received the opinion of counsel.”
- An opinion of counsel cannot shield a defendant from post-verdict liability if, at trial, the jury found the patent not invalid and infringed, as the defendant “could not credibly argue that it maintained its good-faith belief of invalidity following a verdict to the contrar.” Accordingly, summary judgment should not have been entered absolving the defendant of post-verdict liability.
- A party seeking to show lack of the requisite intent to infringe, based on receipt of a competent counsel opinion of noninfringement or of invalidity, must also show that it “had exercised reasonable and good-faith adherence to the analysis and advice therein.” “In other words, such a party must prove good-faith reliance on the opinion of counsel. Upon receipt of an opinion, it is possible that a party may choose to ignore the opinion, or disagree with it, or be indifferent to it, among a wide range of reactions to having the opinion in hand. Without proof of good-faith reliance, possession of the opinion alone is hardly dispositive of the state of mind necessary to avoid liability. . . . [U]nquestionable proof of good-faith reliance is necessary to support a summary judgment of no indirect infringement.”
- Summary judgment “cannot lie for any time before SDI received its opinion, nor can it lie thereafter because SDI’s good-faith reliance on the opinion remains to be tested.”