Landmark Screens, LLC v. Morgan, Lewis, & Bockius, LLP
676 F.3d 1354
Fed. Cir.2012Background
- Landmark invented a LED electronic billboard and retained Kohler to file a patent application.
- The PTO identified multiple inventions in the '096 application and Kohler elected to pursue claims 26-31 and 56-72 in the '916 divisional.
- Kohler and Landmark failed to timely correct deficiencies in the '916 divisional, leading to a Notice of Incomplete Application and potential loss of the '916 claims due to prior art from the '096 publication.
- Kohler subsequently sought to restore the '916 filing date by petition, which the PTO denied for due care reasons, resulting in Landmark losing rights on the '916 divisional claims.
- Landmark learned of problems in late 2004; Kohler and MLB allegedly misled Landmark about prospects of cure.
- Landmark filed state court malpractice and related claims in November 2005; those were dismissed in state court, paving the way for federal fraud and other claims filed May 2008 in district court; the district court granted summary judgment on timeliness, and later issued a Damages Order limiting possible recovery.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Timeliness of fraud claim under California law | Landmark tolls statute during state court proceedings | Aerojet defeats tolling | Fraud claim timely due to equitable tolling |
| Jurisdiction for fraud claim under patent-law theories | Fraud damages depend on patentability; jurisdiction proper | No exclusive patent-law basis; limited jurisdiction | District court had jurisdiction under 1338(a) and supplemental jurisdiction under 1367(a) |
| Damages scope tied to reissue claims | Reissue claims broadened; damages may extend | Reissue claims necessarily encompass divisional claims | Damages Order vacated; scope cannot be determined solely by reissue breadth; remand for trial on damages |
| Whether to vacate Damages Order independently of tolling | Damages order flawed for multiple reasons beyond scope issue | Damages order proper if reissue scope governs damages | Damages Order vacated for multiple independent reasons |
Key Cases Cited
- Christianson v. Colt Industries Operating Corp., 486 U.S. 800 (1988) (jurisdiction under 1338(a) depends on patent-law elements in the claim)
- Davis v. Brouse McDowell, L.P.A., 596 F.3d 1355 (Fed.Cir.2010) (jurisdiction in legal-malpractice related to patent filing)
- Daviton v. Columbia/HCA Healthcare Corp., 241 F.3d 1131 (9th Cir.2001) (three-factor California equitable tolling test; notice, same facts, good faith)
- Aerojet Gen. Corp. v. Superior Court, 177 Cal. App. 3d 950 (Cal.App.1986) (limits on equitable tolling; negative rule under certain circumstances)
- Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed.Cir.2007) (exclusive jurisdiction considerations in patent-law related claims)
- Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed.Cir.2007) (jurisdictional framework for patent-law related actions)