Ninth Circuit upholds good faith defense to claim of malicious prosecution in patent infringement case, relies on patentee’s advice of counsel

In Fisher Tool Co., Inc. v Gillet Outlillage, the US Court of Appeals for the Ninth Circuit affirmed its recognition of the “good faith” safe harbor defense to a malicious prosecution claim brought by a plaintiff who won on the merits in the patent infringement case.

In Fisher Tool, Gillet brought a patent infringement suit against Fisher Tool and others, asserting that Fisher Tool et al. infringed Gillet’s patent for hose claimp pliers.  However, Gillet dropped the suit after a Markman hearing resulted in a narrow construction of the patent’s claims.  After Gillet dropped the patent infringement suit, Fisher Tool sued Gillet for malicious prosecution, Lanham Act 43(a) (false representation) violations, and state law claims based on allegedly false statements that Gillet and its representatives made to third parties about Fisher Tool’s alleged infringement.

However, before filing suit and making the statements to third parties, Gillet consulted counsel to obtain opinions as to whether infringement occurred.  The court noted that two in-house counsel and a third outside counsel all issued written statements of opinion that the accused products infringed the patent.  Nothing that the malicious proseuction claims required a showing of bad faith, the court refused to find Gillet liable for mailicious prosecution.

The case reminds patent holders who are asserting infringement claims that pre-litigation opinions can be very useful to help avoid liability in case the infringement case does not end up in the patent holder’s favor.

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