Friday, November 18, 2011

Inventor wins procedural issue against law firm in malpractice case

Some background of the case:

This is a legal malpractice action in which Stephen Byrne alleges that WHE was negligent in failing to secure broader patent protection for his invention, which relates to an improvement to a grass and weed trimmer used in landscaping. Byrne alleges that, as a result of WHE’s negligence, he was unsuccessful in a patent infringement lawsuit against Black & Decker Corporation and related entities (collectively, “Black & Decker”). (...) Byrne retained WHE to prepare and prosecute a patent application for his invention, resulting in the issuance of United States Patent No. 5,115,870 (“the ’870 patent”) on May 26, 1992.

Yes, this patent litigation followed UNSUCCESSFUL licensing negotiations:

In late 2004, after unsuccessful licensing negotiations, Byrne sued Black & Decker in the United States District Court for the Eastern District of Kentucky, alleging that Black & Decker’s sale of a string trimmer containing a U- shaped wire edge guard infringed the ’815 patent. See Complaint, Byrne v. Black & Decker Corp., Case No. 2:04- cv-262 (E.D. Ky. Dec. 30, 2004), ECF 1.

Affidavits in the case:

Byrne opposed WHE’s motion, arguing that the proper inquiry is not whether the particular patent examiner in this case would have allowed the patent without the “planar” limitation, but whether a hypothetical claim without the “planar” limitation could have issued. In support of his opposition, Byrne submitted two affidavits: one from William Kiesel, a patent attorney, and another from Byrne himself. Kiesel’s opinion discussed the stan- dard of care for a patent attorney and WHE’s alleged negligence, as well as the scope of the prior art Bartholo- mew patent (U.S. Patent No. 4,091,536), on which the examiner relied in rejecting some of Byrne’s original claims. Byrne’s affidavit primarily related to the nature of his invention, the scope of the Bartholomew patent, and the novel features of his invention that were independent of the “planar” limitation.

Of some interest as to what the district court did:

Initially, the district court granted WHE’s motion to strike Kiesel’s affidavit, sua sponte deciding that Kiesel was “not qualified to provide expert testimony on the issue of legal malpractice in the patent application process.” Byrne v. Wood, Herron & Evans, LLP, 2009 WL 2382415, at *3 (E.D. Ky. July 30, 2009). It reached this decision despite the fact that Kiesel had worked as a patent attorney for 40 years, written and prosecuted over 500 patent applications, served as an adjunct professor of patent law, and previously prepared expert reports or provided expert testimony on patent-related issues, including in four legal malpractice cases. The court found that, because Kentucky law requires expert testimony on the standard of care in a malpractice action unless it is so obvious as to be familiar to a lay person, Byrne could not defeat summary judgment without such testimony. Id. at *2 (citing Stephens v. Denison, 150 S.W.3d 80, 82 (Ky. Ct. App. 2004).

An interesting nuance in the case:

Byrne is correct that our case law, as it currently reads, supports the district court’s jurisdiction over Byrne’s state law malpractice claim and, by extension, our jurisdiction to hear this appeal. Although we must adhere to our precedent, we believe this court should re-evaluate the question of whether jurisdiction exists to entertain a state law malpractice claim involving the validity of a hypothetical patent, for the reasons discussed below.


Against this backdrop, it is difficult to see the federal interest in determining the validity of a hypothetical patent claim that is ancillary to a state law malpractice action. The outcome of such determinations invariably will rest on case-specific inquiries comparing prior art against patent claims that have not and will never issue. As such, these determinations, which involve only appli- cation and not interpretation of patent law, have little or no bearing on other cases. On the other hand, finding federal jurisdiction over malpractice cases involving questions of hypothetical patent claims opens the federal courthouse to an entire class of actions, thereby usurping state authority over this traditionally state law tort issue. See Grable, 545 U.S. at 318 (explaining the concern in Supreme Court precedent about attracting “a horde of original filings and removal cases” and “herald[ing] a potentially enormous shift of traditionally state cases into federal courts”).
Applying these federalism considerations, several courts either have outright disagreed with our analysis or have found a meaningful distinction when only hypotheti- cal patent rights are at stake. See, e.g., Genelink Biosci- ences, Inc. v. Colby, 722 F. Supp. 2d 592, 598-99 (D.N.J. 2010) (remanding a legal malpractice case for lack of subject matter jurisdiction, finding that “because no patent was issued, no patent rights are at stake, and there are therefore no fears that substantive patent law would [be] altered by inconsistency”); Roof Technical Servs., Inc. v. Hill, 679 F. Supp. 2d 749, 754 (N.D. Tex. 2010) (granting a motion to dismiss a legal malpractice case for lack of subject matter jurisdiction and explaining that, “there is a federal interest in the uniform applica- tion of patent laws, but that interest is not implicated here, where no patent rights are actually at stake”); Minton v. Gunn, 301 S.W.3d 702, 709 (Tex. App. Fort Worth 2009) (“[W]e believe the Federal Circuit misapplied United States Supreme Court precedent by disregarding the federalism analysis that the Supreme Court has applied to restrict the scope of ‘arising under’ jurisdiction to a ‘small and special category’ of cases . . . .”), petition for review granted (Feb. 8, 2011). In many cases, the proce- dural posture prevents us from reviewing these decisions, thus allowing courts simply to ignore our law. We address the issues in this appeal, however, because our existing case law compels us to do so.

As to Kentucky law:

To establish a claim for legal malpractice under Ken- tucky law, a plaintiff must prove the following: “(1) that there was an employment relationship with the defendant/attorney; (2) that the attorney neglected his duty to exercise the ordinary care of a reasonably competent attorney in the same or similar circumstances; and (3) that the attorney’s negligence was the proximate cause of damage to the client.” Stephens v. Denison, 150 S.W.3d 80, 81 (Ky. Ct. App. 2004).

The inventor wins on the "expert" issue!

On appeal, Byrne challenges the determination that he was not one of ordinary skill in the art qualified to offer expert testimony on the technical aspects of his invention and the prior art in the field. He argues that the district court abused its discretion in striking his affidavit primarily because the court made no finding of the level of skill in the art. We agree with Byrne.

Of some interest:

In the context of an obviousness determination, for example, “a district court’s failure to make a correct finding on the level of skill constitutes reversible error” unless it does not affect the ultimate conclusion under § 103. Innovention, 637 F.3d at 1323. For example, a district court does not commit reversible error when it applies the lowest level of skill (i.e., a layperson) in find- ing that an invention would have been obvious, “because what is obvious to a layperson is necessarily obvious to one with a higher level of skill in the field of the invention.” Id. (citation omitted). For the same reason, it may be unnecessary to determine the level of skill in the art when the subject matter is “easily understandable.” Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 779 (Fed. Cir. 1983). Thus, there may be situations in which the technology at issue is at such a level that it does not require technical expert testimony, and the failure to identify a level of skill in the art will be harmless.

Of skill level:

As a general rule, an inventor will be a person of at least ordinary skill in the relevant art, and in many cases the inventor will be one of extraordinary skill in the field of invention. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (referring to the “well-settled understanding that inven- tors are typically persons skilled in the field of the inven- tion”); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1368 (Fed. Cir. 2002) (explaining that the inventor is “presumably also an artisan of ordinary skill in the art” for purposes of comparing expert testimony); Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985) (“Inventors, as a class, according to the concepts underlying the Constitution and the statutes that have created the patent system, possess something – call it what you will – which sets them apart from the workers of ordinary skill . . . .” (emphasis in original)). Because it will be the rare case in which an inventor is not one possessing skill in the art, it is especially inappropriate for the district court to strike Byrne’s affidavit without going through the exercise of identifying the requisite level of skill.
Second, the technology at issue in this case does not appear to be particularly complex. Although string trim- mers generally are motorized, the invention in this case relates to a guard and guide mounted on the trimmer. Indeed, Byrne’s affidavit indicates that he first developed his invention by mounting an “electric wok lid” from his house to the shaft of a string trimmer to provide a straight cut. Joint Appendix (“J.A.”) 306. Given that, had the district court analyzed the appropriate level of skill in the art, it likely would have concluded that it is low.
Finally, the procedural posture of this case exacerbates the district court’s error. Here, WHE never argued that Byrne was not a person of ordinary skill in the art, and the parties did not address the level of skill in the art anywhere in their summary judgment briefing. While Byrne does not argue that a district court may never exclude expert testimony sua sponte, the district court’s decision to do so without any argument or evidence of the level of skill in the art is particularly problematic.


Having asked the court to stay discovery to file a targeted motion for sum- mary judgment that did not raise the question of Byrne’s level of skill in the art, WHE cannot fault Byrne for failing to engage in an analysis regarding that very issue. All of these factors lead us to the conclusion that the district court abused its discretion in striking Byrne’s affidavit.5
Relying on our statements in Sundance, the district court also noted that, even if Byrne is one of ordinary skill in the art, “this does not necessarily qualify him as an expert.” Byrne, 2010 WL 3394678, at *7 (citing Sundance, 550 F.3d at 1363). Although it is true that possessing ordinary skill in the art does not automatically qualify a witness as an expert, there is no indication that any other qualifications are necessary, and “[a] witness possessing merely ordinary skill will often be qualified to present expert testimony both in patent trials and more gener- ally.” Sundance, 550 F.3d at 1363. The district court did not identify any independent reason why Byrne was not qualified as an expert other than its finding that he lacked skill in the art, and WHE offers no other reason on appeal. Accordingly, we see no basis to conclude that Rule 702 of the Federal Rules of Evidence acts as a sepa- rate bar to Byrne’s testimony.


For the reasons stated above, the decision of the district court is vacated and remanded for further proceedings consistent with this decision.
COSTS Costs are awarded to Byrne.


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