Malpractice Plaintiff Bears Burden to Show Patentability of Alternative Claim Language

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By Anandashankar Mazumdar  

A plaintiff accusing patent counsel of negligently drafting patent claims too narrow to encompass a competitor's device must, in order to survive summary judgment, come forth with sufficient evidence to create a triable question regarding whether alternative claim language would have been patentable, the U.S. Court of Appeals for the Federal Circuit ruled May 4 (Minkin v. Gibbons P.C., Fed. Cir., No. 11-1178, 5/4/12).

Affirming summary judgment in favor of the law firm, the court rejected an argument that the Federal Circuit's 2010 decision in Davis v. Brouse McDowell L.P.A. required that a plaintiff in such cases be given some deference on the question of whether alternative drafting would have resulted in the issuance of an enforceable patent.

Competitor Designs Around Pliers Patent.

In the 1960s, Herman Minkin, an airplane mechanic, invented a type of extended-reach pliers, which allow a mechanic to reach parts deep inside an airplane engine without necessarily disassembling all the mechanisms on the outside of the engine.

In 1996, Minkin engaged the law firm Gibbons P.C. to apply for a patent on his extended reach pliers.

The application (08/660,119) claimed a device with two pivot points. The handles are at one end and join the jaws between the two pivots. The free ends of the jaws and the handles are at least twice their respective lengths between the pivots.

The application was rejected in its entirety for anticipation and obviousness, based to a great extent on a 1903 patent granted to E. E. Brindos for “logging or tie handling tongs.”

The law firm then submitted an amendment to Claim 1 of the patent that changed the two-to-one ratios to a minimum of three-to-one. The Patent and Trademark Office found that this overcame anticipation, but that the claims were still obvious in light of Brindos and other prior art.

Patent Issued After In-Person Interview.

Gibbons then filed a continuation-in-part (08/904,524) for just Claim 1 of the '119 application, including a declaration addressing the obviousness issue, and abandoned the original application.

Following an interview with the patent examiner, the PTO issued in 2000 a patent (6,012,363) for the three-to-one ratio device.

Minkin then formed H&M Aeronaut Tool Co. to manufacture his extended-reach pliers and he began selling them to wholesale suppliers such as Danaher Tool Co., which shipped them to retailers.

In 2007, Minkin discovered that Danaher had designed around the '363 patent and was making its own extended-reach pliers.

Minkin then sued Gibbons in state court, alleging patent prosecution malpractice. According to Minkin, Gibbons had negligently drafted the claims so narrowly that his patent gave him no protection against competitors. The proceeding was removed to federal court.

Applying New Jersey state law, Judge William J. Martini of the U.S. District Court for the District of New Jersey granted summary judgment in the law firm's favor after finding that Minkin had not established that any hypothetical alternative claims would have been patentable.

Minkin appealed.

Alternative Claims Must Be Patentable.

Judge Jimmie V. Reyna began by citing the elements of negligence under New Jersey common law--that is, the existence of a relationship imposing a duty care, which was breached and which proximately caused damage to the plaintiff--the element significant to this appeal being proximate cause.

In other words, in order for Minkin's claim to lie, he must show that Gibbons's negligent drafting of the patent claim was the proximate cause of harm to Minkin.

Under Davis v. Brouse McDowell L.P.A., 596 F.3d 1355, 93 USPQ2d 1917 (Fed. Cir. 2010), an element of causation in such “suit-within-a-suit” cases is that the plaintiff establish that but for the alleged negligence of the patent counsel, the invention would have been patentable.

Thus, the following standard was applied: “Minkin must prove by preponderant evidence that alternate claim language would have been deemed patentable by the PTO and that it would have read on the Danaher tool.”

The court first turned to the district court's finding that Minkin's alternative claim language proposals were not patentable.

On appeal, Minkin argued:  

that (a) [he] did not have the burden of showing the nonobviousness of the alternate claims at the summary judgment stage of the proceeding, (b) even if [he] did have the burden at the summary judgment stage, the nonobviousness of the alternate claims was shown in [an expert's] supplemental report, and (c) the trial court should have inferred the nonobviousness of [the] alternative claim language because the '363 patent issued after an in-person interview.  



The court found all these arguments meritless.

Davis Does Not Require Deference.

First, the court rejected the argument that Minkin was inappropriately burdened with showing nonobviousness of the alternative claims at this stage of the litigation. The court rejected Minkin's argument that Davis required the court to defer to the malpractice plaintiff's allegations regarding nonobviousness of alternative language.

Minkin argued that statements from Davis implied that a malpractice plaintiff in such a case was due some deference with regard to his allegation that the claims would have served him better but for the negligence of counsel.

According to the court, Davis did not “establish a more deferential standard.” Rather, it simply observed that under Fed. R. Civ. P. 56(e), a “full 'patentability analysis similar to that required in an invalidity trial' ” was not necessary to survive summary judgment.

Davis, the court said, did not free the plaintiff from the burden of introducing “evidence sufficient to establish an issue of material fact as to patentability.”

Narrow Claims Hard Won.

Applying that standard in this case, the court observed that Minkin's claims, “unlike Davis, had already drawn numerous obviousness rejections from across a very crowded art field,” and thus it was up to him to come up with some claim language that was at least arguably patentable.

The court rejected the argument that this amounted to imposing the impossible standard of “proving a negative” in order to proceed with is malpractice claim. The court held that Rule 56 obligates the plaintiff to come forth with “specific facts” that showed that there was a material dispute regarding whether the patent counsel should have drafted better claims.

The court said:  

[T]he district court was obligated to determine whether Minkin could satisfy [his] ultimate burden of showing patentability in light of Gibbons's motion. Rule 56 is designed to assess sooner rather than later the parties' proof in order to see whether there is a genuine need for trial. … Minkin's improper reliance on dicta from Davis to save [himself] from summary dismissal is incompatible with a basic purpose of Rule 56.  



The court noted, indeed, that Minkin had not cited a single material fact that would serve to show that the alternative patent language would not have been obvious.

Expert Report Was Insufficient.

Next, the court rejected Minkin's argument that a supplemental report by his expert, Richard Gearhart, was sufficient to create a triable issue on obviousness.

The court noted that the district court addressed this report “in detail” and agreed that there was any evidence in it to show that the alternative patent claims would not have been obvious.

Indeed, the court found that Minkin was attempting to “recast [Gearhart's] anticipation analysis” as addressing the obviousness issue, which violated the Federal Circuit's jurisprudence strictly separating the anticipation and obviousness tests.

The court thus agreed with the district court's conclusion that the Gearhart report did not create a triable question on obviousness.

Existing Patent Does Not Imply Patentability.

Finally, the court rejected the argument that the fact that the '363 patent was issued after an in-person interview with the patent examiner should imply that Minkin's proposed alternative claims would also have been patentable.

The court agreed with the lower court that there is no such “presumption of nonobviousness,” especially when Minkin was arguing that claims broader than the '363 claim would have been patentable. The court said:  

The challenge for Gibbons all along … was drafting broadly in the face of such a crowded art field. … Including a 3:1 pivot ratio limitation was the final compromise to the claim language agreed on by the examiner and inventor in an effort to secure patentability. The language of the issued '363 patent, however, is entirely distinct from the alternative claim language drafted by Gearhart, who attempts to capture more scope for purposes of this litigation. An inference of nonobviousness does not attach to the alternate claims by virtue of the issued '363 patent because the claim terms are different.  



The patentability of the narrow '363 claims did not imply that broader claims would have been patentable, the court concluded.

The court thus affirmed the award of summary judgment. Chief Judge Randall R. Rader joined the court's opinion.

O'Malley Again Disputes Jurisdiction.

Judge Kathleen M. O'Malley filed a concurring opinion rejecting the Federal Circuit's exercise of jurisdiction at all in this case. This was the latest in a series of such objections by O'Malley.

As she did in Byrne v. Wood Herron & Evans LLP, 102 USPQ2d 1073 (Fed. Cir. 2012) (57 PTD, 3/26/12), Memorylink Corp. v. Motorola Inc., 102 USPQ2d 1334 (Fed. Cir. 2012) (73 PTD, 4/17/12), and USPPS Ltd. v. Avery Dennison Corp., 102 USPQ2d 1401 (Fed. Cir. 2012), O'Malley argued again that granting jurisdiction in such malpractice cases violates Supreme Court precedent.

Minkin and H&M were represented by Patrick T. Collins of Franzblau Dratch, Livingston, N.J. Gibbons was represented by Stephen R. Long of Drinker Biddle & Reath, Florham Park, N.J.

By Anandashankar Mazumdar  

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