Advice-of-Counsel Defense Not a “True” Affirmative Defense Under Rule 8(c)

Federal Rule of Civil Procedure 8(c) catalogues a list of affirmative defenses that an answering party must plead. The rule also requires, without elaboration, that the party assert “any other matter constituting an avoidance or affirmative defense.” In patent litigation, one defense to a charge of willful infringement is the so-called “advice of counsel” defense. The question, then, is whether this defense must be pleaded affirmatively. The answer, according to a recent decision by district judge Joseph J. Farnan, Jr., is “no.”

Responding to a discovery dispute in the underlying infringement litigation, the Court acknowledged the downside to holding that, at least in the willful infringement context, the advice-of-counsel defense falls within the ambit of Rule 8(c). In particular, the Court cautioned that a party’s reliance on the advice of counsel is only one factor in evaluating willfulness and that “treating advice of counsel as an affirmative defense . . . risks weakening and/or shifting the burden of proof to the accused infringer,” an outcome contrary to established Federal Circuit precedent.

According to the Court, a genuine affirmative defense “rais[es] new facts and arguments that, if true, will defeat the plaintiff’s . . . claim, even if all allegations in the complaint are true.” By contrast, a defense that simply “negates some element of plaintiff’s prima facie case” falls outside the scope of Rule 8(c).

Weighing these standards, the Court held that the defense of advice of counsel “does not entail admitting the allegations of the plaintiff’s complaint and does not alone overcome a plaintiff’s claim of willful infringment.” Thus:

“[A]dvice of counsel is only an ‘affirmative defense’ in the sense that it must be introduced into the litigation by the accused infringer in mitigation of a claim of willfulness; it is not a ‘true’ or ‘mandatory’ affirmative defense under Rule 8(c) that must be pled in the answer.”

In the continuing dialogue over how and when to preserve the accused infringer’s attorney-client privilege while also recognizing that party’s ability to maintain a defense, this decision helps shed light on the still evolving contours of the willfulness defense.

LG.Philips LCD Co. Ltd. v. Tatung Co., C.A. No. 04-343-JJF (July 13, 2007) (Farnan, J.).

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