Amicus Brief in the Federal Circuit on Willful Patent Infringement and the Attorney-Client Privilege

11/6/2003

IP Due Diligence, Litigation, and Patent Litigation

MoFo News Item

Morrison & Foerster recently filed on behalf of BEA Systems, Inc. and Novell, Inc. a brief amici curiae in a case pending before the Federal Circuit: Knorr-Bremse Systeme Fuer Nutzfahrzeuge Gmbh v. Dana Corporation. The Federal Circuit took the case en banc and requested briefing from the parties and amici on two questions:
    (1) When the attorney-client privilege and/or work product privilege is invoked by a defendant in an infringement suit, is it appropriate for the trier of fact to draw an adverse inference with respect to willful infringement?
    (2) When the defendant has not obtained legal advice, is it appropriate to draw an adverse inference with respect to willful infringement?
Morrison & Foerster's brief is signed by patent law eminence Donald S. Chisum, who is of counsel with the firm. The brief argues against both adverse inferences, explaining that an adverse inference against a litigant's exercise of the attorney-client privilege is prohibited in a variety of other contexts, and that a duty to consult counsel is not well-grounded in either precedent or the policies of the patent system.

MoFo's Amicus brief is available online in pdf format (which includes the Table of Authorities). In addition, other documents filed in the case are available on the website of St. Onge Steward Johnston & Reens, who acted as counsel for defendants-appellants.

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