The advise of counsel defense against a charge of willful infringement presents a choice to the potential infringer - using counsel who has already provided a non-infringement opinion or using counsel who is newly retained for purposes of trial.

Treble damages and attorneys fees may be imposed against a company based on willful patent infringement. In addition, a company's employee may also be exposed to liability if the employee actively and knowingly induced the company's infringement. To avoid willfulness, however, an opinion of non-validity or non-infringement must be a competent one.

One seemingly logical choice of counsel to provide such competent opinion is one who has trial experience. This is because the opinion may ultimately be examined by a judge or jury at trial. Thus, a company may want to select opinion counsel who can eventually serve as trial counsel. Indeed, some courts have suggested that opinion counsel should have litigation experience, as opposed to merely prosecution experience.

Can opinion counsel legally serve as trial counsel? The answer seems to be yes. Federal rules do not specifically exclude a trial attorney from testifying. Neither statutes nor case law contain such an exclusion.

The American Bar Association Model Rules of Professional Conduct, however, casts some doubt on opinion counsel being able to act as trial counsel. The Model Rules state that counsel should not act as an advocate at trial where counsel is likely to be a necessary witness. This disqualification may extend to counsel's entire law firm.

Yet, opinion counsel may not likely be needed as a witness where the opinion was in writing, according to some case law. Further, case law emphasizes the infringer's state of mind to determine willfulness, not that of the opining attorney. If opinion counsel's state of mind is not the primary focus, then opinion counsel having to testify may not be arguably likely.

Second, if infringing activity continued during litigation, the continuing advice of counsel may still be relevant to the issue of willfulness. Thus, the opinions of counsel provided during litigation and on issues of invalidity and non-infringement may arguably be waived. Whether right or wrong, the arguable basis may only result in an expensive and protracted discovery dispute.

Third, if it is determined that opinion counsel should testify about the circumstances, bases and/or content of a written opinion, such counsel is then vulnerable to damaging cross examination. A multitude of questions directed towards counsel's independence, bias and motive becomes a certainty. It is difficult to find how the implications in such questions, let alone the answers, could benefit the infringer. No doubt, independent witnesses are more favorably received by judges and juries than biased ones.

Fourth, the cost of opposing an attempt to disqualify trial counsel and such counsel's firm based on counsel testifying as a witness would not be incidental. And although perhaps not likely, if counsel and/or counsel's firm is disqualified, the costs to the infringer of retaining new counsel could make a continued defense economically impractical.

The choice of counsel to provide a non-validity and/or non-infringement opinion should be carefully made, notwithstanding the legal ability of opinion counsel to eventually serve as trial counsel. The choice of counsel now can have significant strategic and cost implications later.

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