In Ortho Pharmaceutical Corp. v. Smith, the Federal Circuit Court of Appeals held that an infringer's reliance on patent counsel's letter is justified if the "opinion [is] thorough enough, as combined with other factors, to instill a belief in the infringer that a court might reasonably hold the patent is invalid, not infringed, or unenforceable."' In crafting this decision, the court focused on the intent and the reasonable beliefs of the infringer. By relying on a letter from patent counsel, Ortho Pharmaceutical Corporation ("Ortho") had a reasonable basis for believing that it had not infringed the patent of American Home Products ("AHP"), despite the letter's legal incorrectness. As a result, the court held that Ortho had not willfully infringed under the totality of the circumstances test used to determine intent. The Ortho case helps clarify what constitutes a competent opinion letter from counsel on which a potential infringer may reasonably rely. Moreover, the competency of such a letter is considered an important factor in determining the infringer's reasonable beliefs and ultimately the infringer's intent.
The patent at issue in Ortho concerns the types of steroids used in oral contraceptives." Ortho filed for a declaratory judgment against AHP to proclaim certain claims of AHP's U.S. Patent No. 3,959,322 ("the '322 patent") invalid.7 AHP counterclaimed in the suit for infringement of the '322 patent and named Ortho's parent company Johnson & Johnson Corporation as an additional defendant.
Brian David Bellamy, Ortho Pharmaceutical Corp. v. Smith: Willful Infringement-Reliance on a Flawed Letter from Counsel, 44 Mercer L. Rev. 1007 (1993).