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[IP_Guy]

Considering the recent Knorr-Bremse en banc decision (Monday, Sept. 13, 2004) does anyone think that a company can get an opinion of counsel without worrying about waiver implications because the adverse inference has been eliminated?  

My understanding is that the existence of counsel is still one of the many factors that will be considered in assessing willfulness.  

If a party decides to rely upon the advice of counsel as one of the many factors (and I think almost every company will still be forced to do this or they will get slashed to pieces on cross-examination), everything underlying the opinion will be waived and the attorneys' records will be discoverable.

I do not think that Knorr solved anything.  It eliminated the adverse inference but smart attorneys will still find ways to create waiver issues because the existence of an opinion is still one of many factors to be considered.

I've had some resistance to this point of view and I am open to opinions. Please advise

[Isaac]

It sounds right to me.  The court said there was no negative
inference from not showing the opinion, but I don't see any
reason why a strong legal opinion that your product/process
does not infringe is not evidence that of non-willfulness.
The CAFC really did not spend much time on that issue.

[JimIvey]

Here's an earlier thread on that case:

http://www.intelproplaw.com/Forum/Forum.cgi?board=patent_other;action=display;num=1095305358

One interesting note regarding the opinion letter:  It's best to not use your ordinary patent practitioner/firm for the opinion letter.  If you choose to waive privilege and produce the letter, it still appears after that opinion that you would waive all privilege with respect to that attorney/firm.  By using someone else, you can "contain" the waiver and maintain privilege for your own patent portfolio.

At least that's what I understand.  I don't litigate much myself.

Regards.