On November 22, 2021, Don Heckenberg published “Halo’s Effect on Opinion of Counsel Defenses” in Westlaw Journal Intellectual Property. The following is an excerpt:
It has been five years since the Supreme Court’s Halo Electronics v. Pulse Electronics decision altered the test that courts are to use when deciding whether to award enhanced damages for willful patent infringement. As was expected, cases following the Halo decision have shown that an opinion of counsel can be a key part of the defense against enhanced damages. But the recent cases also show that merely asserting an opinion of counsel defense does not guarantee that a defendant will defeat a plaintiff’s charge of willful patent infringement. Rather, the cases following Halo indicate that an opinion of counsel must be carefully drafted, and that the defendant must be able to show that it actually relied on the opinion when conducting the activities that are subsequently found to infringe the patent.