1. Opinions of Counsel A Litigator’s Perspective Rick Matthews Friday, February 4 © 2011 Hultquist IP. All rights reserved.

2. COMMON IP PRACTICE AREAS Patents Trademarks Copyrights Licensing IP Litigation IP Transactional Services © 2011 Hultquist IP. All rights reserved.

3. OPINIONS OF COUNSEL Not always first considered when researching, developing, designing, fabricating, etc. So, why are opinions necessary? And, what purpose do they serve? © 2011 Hultquist IP. All rights reserved.

4. OPINIONS OF COUNSEL Purpose: To better determine whether products or processes infringe a valid patent claim (Opinions are not a guarantee of success in litigation) To modify design to reduce risk with respect to third party patent – and possibly avoid litigation © 2011 Hultquist IP. All rights reserved.

5. OPINIONS OF COUNSEL Purpose: To determine/develop best defenses against patent owner To assess risks, possibly to decide not to proceed with a product To defend against a willfulness allegation in litigation © 2011 Hultquist IP. All rights reserved.

6. OPINIONS OF COUNSEL Types: Non-infringement Invalidity Clearance (Freedom-to-Operate) © 2011 Hultquist IP. All rights reserved.

7. OPINIONS FROM NON-ATTORNEYS Refrain from “non-attorney” (e.g., engineer) written opinions, especially negative opinions concerning patents Likely will not be privileged Might be wrong – but could be used in litigation Could undermine correct opinion from qualified U.S. Patent Attorney © 2011 Hultquist IP. All rights reserved.

8. THANK YOU © 2011 Hultquist IP. All rights reserved.