Fifth Circuit Affirms Summary Judgment of No Malpractice Liability

By Dennis Crouch

Sanders v. Flanders (5th Cir. 2014)

This case is an attorney malpractice lawsuit that Eric Sanders is pursuing against his Texas-based patent attorney Harold Flanders. Although the case is based on a Texas state-law claim, it enters Federal Court on grounds of diversity (Sanders is from Georgia). And, although the case involves a number of questions of patent law, those are not substantial enough to raise Federal Circuit appellate jurisdiction. See, Gunn v. Minton, 133 S.Ct. 1059 (2013) (state-law malpractice claims “rarely, if ever, arise under federal patent law.”); See also MDS (Canada) Inc. v. Rad Source Techs., Inc., 720 F.3d 833 (11th Cir. 2013). (Note, Harold Flanders is no longer on the rolls of patent attorneys).

Here, the invention in question is an “effervescent mouthwash tablet.” Over a period of nine years, Flanders prepared and filed “numerous” patent applications on behalf of Sanders. Flanders apparently did not notify Sanders of any of the office action rejections and instead allowed the applications to go abandoned. However, the district court granted summary judgment in favor of Flanders – holding that Sanders had failed to prove either causation or damages. The difficulty with patent prosecution malpractice actions is that attorney misconduct alone is generally insufficient. Rather, the allegedly injured party must also prove that the party’s outcome would have been better absent misconduct. Here, that would mean that a valuable patent would-have-issued.

On appeal, the Fifth Circuit affirmed – finding that Sanders had only presented “speculative” and “unsubstantiated” evidence of damages. (The court did not address causation because a lack of damages was sufficient to affirm).

To prevail on any of his five claims, Sanders had to demonstrate, inter alia, that Flanders’s conduct caused damages, a point he does not contest. It is well settled that damages cannot be established merely through speculation or conjecture. Granting a judgment as a matter of law with respect to damages, the district court concluded that “Sanders’s damages testimony was too speculative as to lost investors and lost profits, and unsubstantiated by competent proof as to out-of-pocket expenses and legal fees, to be recoverable.” Because we agree and affirm the district court’s grant of Flanders’s Rule 50(a) motion on this basis, we need not address whether Sanders presented sufficient evidence with respect to the element of causation—an alternative ground on which the district court granted relief.

Sanders did refile his applications in 2011 – this time with a different patent attorney. See APN 13/316,600. However, that case has also been abandoned for failure to respond to an office action rejection.

12 thoughts on “Fifth Circuit Affirms Summary Judgment of No Malpractice Liability

    1. 1.1

      Interesting read. Arguing that claim language that doesn’t explicitly recite “means plus [function]” falls under 112, 6th just got harder — it was hard to begin with, and I think this case just reaffirmed that notion. IMHO, a good thing.

      I agree that Posner got slapped down on excluding the testimony of the damage’s experts.

      1. 1.1.1

        Arguing that claim language that doesn’t explicitly recite “means plus [function]” falls under 112, 6th just got harder

        Depends on your panel. Prost isn’t buying the majority’s axx-backwards reasoning and neither will the Supreme Court. From Prost’s dissent:

        Professor Lemley raises valid concerns about this court’s means-plus-function jurisprudence as it relates to computer-implemented inventions. Although the majority here did not base its conclusion on such generic structural terms as “a computer” or “a processor,” the end result is the same: Apple’s ’949 patent is construed broadly to cover the function performed by the heuristics, not the specific heuristics disclosed in the specification. This outcome should compel our court to reconsider when we treat functional claims as means-plus-function claims.

      2. 1.1.2

        Oh no, after reading the case, I do not think the court is clear on the requirement of how much structure a claim term must have in order to have sufficiently definite structure to avoid 112(f).

        “Heuristic” has two examples in the specification. Is this the reason the claim has sufficiently definite structure, or is it because the term itself defines definite structure?

        Compare a screw and a fastener. The former defines structure. The latter function. Yet I do no know whether “fastener” is sufficiently definite to avoid 112(f). If it is sufficient, then functional terms themselves avoid 112(f) despite the lingo that says that only the recital of sufficiently definite structure avoids 112(f).

        I think in the end, Prost has the better argument in this case.



          Ned, you do realize that the default position is NOT invoking 112(f), right?

          I think you are having difficulty realizing that 112(f) is not mandatory for functional language.


            anon, you are quite right that the default position that unless the applicant or patentee specifically intends to invoke § 112(f), it should not be invoked – rather the analysis should be whether the claims are indefinite, or not enabled as the case may be. If they are not definite, or not enabled for their full scope, they should not be rescued by §112(f).

            You have persuaded me.


              Persuaded you?

              I think not.

              I think that you still persist in thinking that 112(f) is the only route to be able to use functional descriptions in claim elements – even as you provide no legal reasoning for such a belief – and that the permissive language of 112(f) is still read as mandatory language if one chooses to use functional descriptions in claim language (and not be by some unknown reason to be void for indefiniteness immediately.)

              You quite under-read this case – as is your want for things that do not align with your crusades – in the notion that pervades patent law: the claims are construed according to a person having ordinary skill in the art to which the invention pertains.

              But since this is a rather inconvenient fact for you and Malcolm, I do not expect either of you to treat this fact with any sense of minimal intellectual honesty.


              anon, no actually persuaded me was the discussion of the case where the court noted that we needed a bright line rule for determining when §112(f) was invoked, both for notice to the public and for fairness to the applicant and patent holder. Since the benefits of §112(f) are optionally invoked, it seems both rational and reasonable to have this bright line rule because it is not mandatory.

              So if the person chooses not to invoke §112(f), a functional definition should be given its full scope.

              Now if this is claiming an old and well-known element, there is no problem. If it is claiming an element, even that is new, such as a programming step, there is no problem.

              I only see a problem when the functional definition is not fully enabled by the disclosure. This is pretty much Nights position, and I think it is your position as well.

    2. 1.2


      “Structure” to a person of ordinary skill in the art of computer-implemented inventions may differ from more traditional, mechanical structure. For example, looking for traditional “physical structure” in a computer software claim is fruitless because software does not contain physical structures.

      So much for the usual patent teabagger b.s.

      Indeed, the typical physical structure that implements software, a computer, cannot be relied upon to provide sufficiently definite structure for a software claim lacking “means.”

      Indeed. So let’s watch the Federal Circuit reach deep inside their own butth0les and pull out the magical rabbit:

      Rather, to one of skill in the art, the “structure” of computer software is understood through, for example, an outline of an algorithm, a
      flowchart, or a specific set of instructions or rules.

      Why is the term “structure” in quotes? Oh right: because there is no structure. This is just One Big Fxcking Lie. At best, software has “structure” like an argument or a sentence has “structure.” That’s not the structure contemplated by the patent statutes. On the contrary, the “structure” being referred to by the Federal Circuit is a quintessential example of an abstraction.

      Requiring traditional physical structure in software limitations lacking
      the term means would result in all of these limitations being construed as means-plus-function limitations and subsequently being found indefinite.

      So what?

      After this, the majority simply drops the quotation marks from “structure” and pretends that they are referring to an actual physical structure. What a disengenuous pack of clowns. How low will they sink? Check this out:

      The specification also discusses the structure behind translating “content within a frame rather than translating the entire page that includes the frame.” Id. at col. 123, ll. 6-8. For performing this function, the specification describes an “M-finger translation gesture 4214,” where
      M is a number different from the number of fingers used to translate the entire page.

      So now a “gesture” is a structure? Lies upon lies. How do these people sleep at night?

    3. 1.3

      From my cursory reading of the panel decision, anon, I would say this panel wasn’t amused at all by Posner’s handling of the damages issue.

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