Reviving an Invalid Patent through Attorney Malpractice?

By Dennis Crouch

Normal rule is that when a court finds a patent invalid that the patentee will be estopped from attempting to enforce the patent against any other party. This is the rule that arises from Blonder-Tongue Labs., Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971).

My question: Would this collateral estoppel continue to apply if the patent owner was able to show that it lost the prior case because of attorney negligence rather than because the patent was actually invalid? In criminal and class action cases this sort of inadequate representation argument regularly wins with the support of the due process clause of the constitution. But, a patent infringement lawsuit is somewhat different. However, a key to the Blonder-Tongue decision is the assumption that in the originally case “the plaintiff had fully and fairly, but unsuccessfully, litigated same [validity] claim in the prior suit.” It is hard to say that the claim was fully and fairly litigated if its lack of success was due to attorney malpractice.

The outcome of this question is likely to have some impact on the Gunn v. Minton patent litigation malpractice case that was recently argued at the Supreme Court. In particular, if proof of inadequate representation can clear the patent then there is a much stronger case that the malpractice claim raises substantial issues of patent law.

16 thoughts on “Reviving an Invalid Patent through Attorney Malpractice?

  1. 16

    Thanks for your response, Professor Crouch. I do understand the difference between the full faith and credit clause and the binding authority of the Federal Circuit. The point I was trying to make was to another effect, but, as I try to make it in this response, I find myself uncertain of the point I am trying to make, and there is no need to further clutter the internet with useless information. If I can find a way to word it correctly, I will respond. Thank you for taking the time to respond, and, i assure you, my future forays into commenting on Patently-O will be more well thought out.

  2. 15

    I think you are mixing some issues here.  Although the Federal Circuit does create uniform precedent, it is the full-faith-and-credit clause of the US constitution that binds US courts to respect the decisions of other US courts. 

  3. 14

    This is a great issue you pointed out, and, I think, had it arisen shortly after Blonder-Tounge, there would be a good argument that the doctrine should not apply. However, all patents are now appealable to the Federal Circuit, and I think the obvious argument would be that a plaintiff who loses his case due to attorney negligent should just–and probably would–appeal to the Federal Circuit. Thereafter, the Federal Circuits decision, as to the law, would be binding on all courts, even absent equitable estoppel.

  4. 13

    Leo, your post assume that a court judgment of invalidity is equivalent to the cancellation of claims during reexamination or reissue or the statutory disclaimer of claims. I don’t think a holding of invalidity has that legal effect.

    The effect of a holding of invalidity is equitable, based on estoppel. Thus if a court refuses to estop the PO in a future case, the patent is not restored from some legal oblivion, thus giving independent parties intervening rights.

    If I am wrong here, please cite the statute that says something different. It don’t think it exists.

  5. 12

    My take: collateral estoppel is an equitable concept. That says it all.

    There is no “legal” invalidity except if the US government cancels the claims in a patent one way or another.

    I applaud Dennis for recognizing collateral estoppel for what it is.

  6. 11

    I agree that we wouldn’t need a malpractice action if we had a “revival” doctrine. But I read your original post as positing a descriptive question: whether we can read existing law to contain a revival doctrine. For THAT question, the fact that we do have a malpractice action in existing law, and that we wouldn’t need it if there were a revival doctrine, seems to be indicative that there is no such doctrine as a descriptive matter.

    If you are now asking whether replacing malpractice with a revival doctrine would be a good policy idea (e.g. because it would provide more complete restoration as a matter of reality), that brings a rather different set of issues into play.

  7. 8

    I like your intervening rights plank. After all, whether or not the secondary case of malpractice being found is not a ‘gimme,’ and the public certainly should expect certainty from law (suits adjudicated). Throw that cost too to the malpracticing attorney.

  8. 7

    Hmmm… In the civil context, nothing about making the plaintiff fully and finally responsible for picking a competent and/or well insured attorney strikes me as particularly unfair.

    Another issue, it seems to me, is that allowing revival through malpractice would effectively extend the term of the patent as to other parties, unless you also added a solid intervening rights defense. Otherwise I would have to wait for the statute of limitations on malpractice to run, as well as through any malpractice trial/appeal, before I could safely practice the invalidated claims.

  9. 6

    Dennis, would your argument also apply to copyrights? Let’s say a defendant argues (incorrectly) that some statutorily provision wasn’t followed and my work is deemed by the court to fall into the public domain. I sue my attorney for malpractice because he/she failed to competently rebut the defense. I win the malpractice case. Is my copyright in the work returned to me?

    It seems possible that cases on point in that context already exist.

  10. 5

    Thanks (I was just noticing that some (all) of the circularity can be straightened out, and that “no need” may actually be “some need,” and that that “some need” may mesh perfectly with the situation).

  11. 4

    Definitely – Here, I’m not talking about altering res judicata and so the original winning defendant would be still not have to pay and the attorneys who committed malpractice would still be on the hook for those losses.

  12. 3

    Wouldn’t there still be lost revenue from that particular party that won (incorrectly?) the case?

    If the patent is indeed “valid once again,” wouldn’t the compensation factor for the singular party that it cannot be valid against be enough?

  13. 2

    Thanks TJ – Your comment makes sense in that there is potentially no policy reason if the malpractice decision is able to fully compensate the patentee for the cost of having a patent being indisputably held invalid. I question whether that that assumption (of full compensation) has any basis in reality. In addition, the argument is somewhat circular in that it there would be no need to for the malpractice claim to compensate for potential lost future revenue if the result was that the patent was again enforceable. 

  14. 1

    I don’t have a case, but my first intuition is “almost certainly not.” After all, if you can prove malpractice by the attorney caused your patent to be declared invalid, your recover the full value of the valid patent against the attorney. Getting to enforce the patent against others then creates double recovery, since the value of a patent is, at bottom, what you can recover through infringement litigation.

    In the criminal context, this doesn’t work, because it is pretty hard to recover the value of being executed or being locked through a civil malpractice action against the attorney.

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