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Casey IRACs are produced by an AI that analyzes the opinion’s content to construct its analysis. While we strive for accuracy, the output may not be flawless. For a complete and precise understanding, please refer to the linked opinions above.

Keywords

tortdefendantattorneyliabilitywillpatentattorney-client privilege
attorneyprecedentwilloverruled

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Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 72 U.S.P.Q.2d 1560, 65 Fed. R. Evid. Serv. 365

Facts

Issue

Whether an adverse inference that a legal opinion was or would have been unfavorable should be drawn from a patent infringement defendant's invocation of attorney-client and/or work product privileges or from such defendant's failure to consult with counsel.

An adverse inference that a legal opinion was or would have been unfavorable shall not be drawn from invocation of the attorney-client and/or work product privileges or from failure to consult with counsel.

Rule

The court held that no adverse inference should be drawn from a defendant's invocation of attorney-client privilege or failure to consult counsel in determining willfulness of patent infringement. The determination of willfulness is based on the totality of the circumstances, and the existence of a substantial defense does not automatically negate liability for willful infringement.

The adverse inference that an opinion was or would have been unfavorable, flowing from the infringer's failure to obtain or produce an exculpatory opinion of counsel, is no longer warranted.

Analysis

The court analyzed the implications of drawing adverse inferences from the invocation of attorney-client privilege, concluding that such inferences distort the attorney-client relationship and are not warranted. The court emphasized that willfulness should be assessed based on the totality of circumstances, including the defendants' actions and the clarity of the infringement, rather than on the absence of legal advice.

The court concluded that the adverse inference that an opinion of counsel was or would have been unfavorable flows from an alleged infringer's failure to obtain or produce an exculpatory opinion of counsel. Precedent to the contrary is overruled.

Conclusion

The court vacated the finding of willful infringement and remanded the case for a fresh determination of willfulness without the adverse inference previously applied.

We therefore vacate the judgment of willful infringement and remand for re-determination, on consideration of the totality of the circumstances but without the evidentiary contribution or presumptive weight of an adverse inference that any opinion of counsel was or would have been unfavorable.

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