Tuesday, March 02, 2010

Patent attorney escapes malpractice assertion in Ohio

The case HEATHER A. DAVIS v. BROUSE MCDOWELL, L.P.A has much of interest to patent attorneys. First, it is a legal malpractice case AGAINST a patent attorney. Second, the subject matter of the patent applications at issue itself related to intellectual property: The IP-Exchange as a social networking platform targeted at “intellectual property professionals and non-professionals alike.”

The case includes some intricate questions as to "which law" applies. The initial filing, a malpractice case, was indeed in state court, but got removed to federal district court.

Of the jurisdiction matter, the district court determined that it had jurisdiction over Ms. Davis’s malpractice claim pursuant to
28 U.S.C. § 1338(a). The CAFC reviewed the court’s jurisdictional determination without
deference. Air Measurement Techs., Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P.,
504 F.3d 1262, 1267 (Fed. Cir. 2007). The issue became whether patent law is a “necessary element” of a claim
presented in her complaint.

An interesting twist is that the defendants, who effected removal, argued "for" federal jurisdiction BECAUSE
patent law was a necessary element to resolve the STATE claim, here Ohio’s “case- within-a-case” doctrine.
The end result was that the Federal Circuit was applying Ohio state law, because the state law, as applied
to these facts, required a resolution on patentability. In the end, because the case-within-a-case doctrine
of Ohio state law applies, Ms. Davis must prove, by a
preponderance of the evidence, that she would have obtained patents on her inventions
but for Mr. Thomson’s alleged negligence.

But there was another twist. The CAFC reviewed evidentiary rulings that are not unique to our jurisdiction under
the law of the federal regional circuit. Advanced Cardiovascular Sys., Inc. v. Medtronic, Inc.,
265 F.3d 1294, 1308 (Fed. Cir. 2001). The Sixth Circuit reviews a district court’s
evidentiary rulings for abuse of discretion. See Dickenson v. Cardiac & Thoracic
Surgery of E. Tenn., P.C., 388 F.3d 976, 980 (6th Cir. 2004). The CAFC did NOT
review the evidentiary rulings under Ohio state law. Also: “We look to regional circuit law for
the applicable standard controlling the factual foundation necessary to support an
expert's opinion, which is not a matter peculiar to patent law.” Novartis Corp. v. Ben
Venue Labs., Inc., 271 F.3d 1043, 1051 (Fed. Cir. 2001). [While LBE cannot speak
for the outcome of the case under Ohio law, it might have been different
as to the law for experts under New Jersey state law.]

Although the plaintiff lost [patent attorney won] in this case, patent
attorneys should note that the patent attorney in the case was found to have
breached his duty to the client:

Mr. Thomson went on vacation, missed filing dates, and, by his own
admission, filed an application which he realized contained a poorly drafted specification
and claims which he intended to repair at a later time. This is certainly not standard or
adequate patent attorney representation
, especially if, as Ms. Davis alleges, he did not
inform her of his intention to proceed this way.

IPBiz notes that the patent attorney here had five days to do the work:
On Wednesday, January 17, 2007—five days before the filing deadline for the
utility and PCT applications—Ms. Davis again contacted Mr. Thomson.

More importantly: Mr. Thomson agreed to prepare and file the applications by the deadline. However, he
told Ms. Davis that he was leaving the following day for vacation and would not return
until Monday. He asked Ms. Davis to provide him with all necessary files before he left.


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