With the doubling of a nearly $200 million judgment, based in part on an opinion of counsel found to be incompetent, the recent case of Bard Peripheral Vascular v. W.L. Gore, 670 F.3d 1171 (Fed. Cir. 2012), reminds us of the challenges in advising clients regarding the possibility of liability for patent infringement.

Clients often ask for an opinion as to whether or not they may incur liability for patent infringement upon undertaking or continuing some specified activity, such as manufacturing a new product or employing a new process. Typically, the question is asked with respect to known patents. In essence, the question is, “Am I free to undertake this activity?” or, “Am I likely to be found liable for patent infringement?” At best, answering these questions requires a careful study of the relevant facts and law and results in an opinion that assesses the probable result if and when the same question is presented to a court. A written record of the study and the opinion, generally referred to as a freedom to operate (FTO) or clearance opinion, may be requested by the client. While this entails additional expense, the written record may later become valuable as evidence of a client’s good faith.

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