Protective Optics, Inc. v. Panoptx, Inc.

ORDER RE: LOCAL RULE 3-

Reliance on the opinions legal of counsel is a defense to charges of willful patent infringement. The Northern District’s local patent rules, however, set forth specific steps that a defendant must take in order to avail himself of this defense. The rule states:

N.D. Cal. Civ. Patent L.R. 3-8. In other words, a defendant who wishes to escape charges of willful infringement may rely on the advice of his attorney, but he must alert the other side of his intention to do so, and he must turn over (or identify in a privilege log) all documents that relate to the attorney’s opinion. Failure to do so precludes use of the attorney’s opinion as a defense.

There is no dispute that Panoptx, the party that presently purports to shield itself with the opinions of its attorneys, failed to comply with Local Rule 3-8. The Court issued its claim construction order on October 23, 2006. The fifty-day deadline under Local Rule 3-8 came and went, on December 12, 2006, without a peep from Panoptx. More than a month later, in an unrelated document production, Pa-noptx provided a copy of a letter from its former attorneys, which relates the attorneys’ opinion on some of the…