Davis v. Brouse McDowell (Fed. Cir. 2010)
Ms. Davis has developed the “IP-Exchange” as a networking portal for IP professionals. The site boldly claims a “Patent Pending Business Method.”
Before releasing her website, Ms. Davis spoke with Daniel Thomson then of the Ohio-based Brouse McDowell law firm about patent protection. Their conversation apparently included a discussion of potential international filing. There was no direct evidence, however, that Mr. Thomson informed her of the “absolute novelty” rule found in most countries that bars an inventor from obtaining a patent on material that had been publicly disclosed prior to the filing of the patent application.
Ms. Davis released her website in 2005 and then several months later (January 2006) she filed two provisional applications pro-se. Five-days before the non-provisional application was due, Ms. Davis again approached Mr. Thomson and asked him to file non-provisional applications and a PCT application. He agreed to do so in a rushed manner (despite a planned vacation). The PCT application was not filed by the one-year expiration date, although three US non-provisional applications were filed.
Ms. Davis eventually allowed her US patent applications to go abandoned. She then sued Thomson and Brouse McDowell for malpractice based on failure to file the PCT applications and negligence in preparing the US applications. The district court (Judge Sara Lioi) dismissed the case on summary judgment – finding that the case lacked merit. On appeal, Federal Circuit affirmed in an opinion written by Judge Moore and signed by Judges Newman and Bryson.
Patent prosecution malpractice has historically been difficult to prove because the court requires proof that – but for the malpractice, the invention would have been covered by a valuable patent.
We agree with the district court that Mr. O’Shaughnessy’s [expert] report provides sufficient evidence to establish a genuine issue of material fact as to whether Mr. Thomson breached a duty he owed to Ms. Davis as her attorney. 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.
However, even if Ms. Davis can establish that Mr. Thomson breached a duty to her, she must still also prove causation, i.e., that absent his breach she would have obtained a patent. . . . [However, the] district court observed that Mr. O’Shaughnessy had not performed a prior art search or a “patentability analysis,” nor had he identified particular claims that could be made for Ms. Davis’s inventions. Therefore, the court found that Mr. O’Shaughnessy’s patentability opinion lacked adequate foundation and could not be relied upon by Ms. Davis as evidence of patentability.
We agree with the district court’s conclusion. . . . Mr. O’Shaughnessy’s opinion that Ms. Davis’s inventions are patentable is precisely [the] type of conclusory statement [that are insufficient to defeat summary judgment]. His expert report contains no affirmative analysis supporting his opinion on patentability; instead, the opinion is followed only by the equally conclusory assertion that Mr. O’Shaughnessy has seen nothing to “block” this patentability. An unsupported opinion such as this cannot and does not create a genuine issue of material fact as to the patentability of Ms. Davis’s inventions. . . . [A]n expert’s naked conclusion is insufficient to survive summary judgment.
In dicta, the court made clear that the “case-with-a-case” does not require that the malpractice plaintiff identify the exact patentable claims and how those claims would have been patentable over the prior art. Rather, the burden is to “establish the likelihood that her inventions would have been held patentable on examination . . . in accordance with the criteria of patentability applied during examination.”
Federal Courts Jurisdiction: An interesting aspect of the decision involves the jurisdiction of federal courts. Malpractice is typically a state claim, but some patent malpractice cases are properly adjudged by federal courts if the “relief necessarily depends on resolution of a substantial question of federal patent law.” In this case, the court noted that federal jurisdiction would not exist if the malpractice claim had been wholly based on loss of foreign patent rights.