Hitachi v. Top Victory: Court Declines to Apply Retroactively AIA's Prohibition on the Use of an Accused Infringer's Decision Not to Obtain Advice of Counsel as Evidence of Willful Infringement

April 1, 2013

Hitachi Consumer Electronics Co. LTD. ("Hitachi") filed a patent infringement action against Top Victory Electronics (Taiwan) Co LTD ("Top Victory"). As the case approached trial, the parties filed several motions in limine. In particular, Top Victory filed a motion in limine to preclude Hitachi from arguing to the jury that its failure to obtain an opinion of counsel could be used against it in determining whether its infringement was willful.

The district court determined that Top Victory was essentially asking for the district court to apply the new Advice of Counsel Provision from the America Invents Act. "In their briefing, Defendants effectively ask the Court to apply the Advice of Counsel provision of the American Invents Act (AIA), which expressly prohibits the use of an accused infringer's decision not to obtain advice of counsel as evidence of willful infringement to this case. See 35 U.S.C. ยง 298."

The district court was not persuaded that this provision should be given retroactive effect. "The Court declines to retroactively extend such to this case whose filing clearly predates the AIA. In adopting the AIA, Congress clearly determined that this prohibition applies prospectively only and does not apply to cases predating the AIA."

The district court then noted that the case was filed before the AIA was enacted and that the failure to obtain the advice of counsel was a relevant consideration to the issue of willfulness. "This case was filed before the AIA was enacted into law, and under pre-AIA case law, whether or not Defendants sought opinions of counsel is relevant to the issue of willfulness. See, e.g., Wi-Lan, Inc. v. Acer, Inc., No. 2:07-cv-130, Dkt. No. 1059 at 4 (E.D. Tex. Jan. 20, 2011) ("the parties are allowed to present evidence regarding whether an opinion of counsel was sought or received"). Without delving into the substance of the advice, a yes or no answer does not require the party asked to waive any type of attorney-client or other privilege."

Accordingly, the district court denied Top Victory's motion.


Hitachi Consumer Electronics Co. LTD., et al. v. Top Victory Electronics (Taiwan) Co LTD, et al., Cause No. 2:10-CV-260-JRG (E.D. Tex. March 20, 2013)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.