Minkin v. Gibbons, P.C.
680 F.3d 1341
Fed. Cir.2012Background
- Minkin and H&M allege Gibbons committed malpractice in prosecuting the ERP patent.
- The '363 patent issued in 2000 with a 3:1 pivot ratio limitation stemming from Gibbons' prosecution.
- Danaher designed around the ERP, became a major competitor and Danaher customers included Sears and NAPA.
- District court granted summary judgment for Gibbons, ruling no genuine dispute on causal proof.
- Minkin offered Gearhart’s alternate claims to show broader patentable scope; district court found no nonobviousness evidence.
- On appeal, court addresses suit-within-a-suit causation, patentability of alternate claims, and evidence sufficiency.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Burden to show nonobviousness | Minkin must show nonobviousness of alternate claims. | Gibbons contendes no genuine fact on nonobviousness exists. | Minkin bears burden; no genuine nonobviousness dispute. |
| Sufficiency of Gearhart supplemental report | Supplemental report addresses nonobviousness. | Supplemental report only covers novelty, not §103 nonobviousness. | Supplemental report does not establish nonobviousness. |
| Suit-within-a-suit applicability | But-for causation requires broader patentable claims would have issued. | Plaintiff must prove patentability would have occurred; not established here. | No causation shown; judgment affirmed. |
| Inference from issued '363 patent | In-person interview yielding a patent suggests nonobviousness of broader claims. | Issued patent and Gearhart's claims are not equivalent; no inference allowed. | No inference of nonobviousness from the '363 patent. |
Key Cases Cited
- Davis v. Brouse McDowell, L.P.A., 596 F.3d 1355 (Fed. Cir. 2010) (burden on patentability in suit-within-a-suit; summary judgment standard)
- Warrior Sports, Inc. v. Dickinson Wright, P.L.L.C., 631 F.3d 1367 (Fed. Cir. 2011) (requires showing of causation in patent malpractice cases)
- Garcia v. Kozlov, Seaton, Romanini & Brooks, P.C., 179 N.J. 343 (N.J. 2004) (case-within-a-case framework for proximate causation)
- Conklin v. Hannoch Weisman, 145 N.J. 395 (N.J. 1996) (elements of New Jersey legal malpractice claim)
- Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. 2007) (jurisdiction in patent attorney malpractice cases when injury involves patent scope)
- Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir. 2007) (jurisdiction and standard in patent attorney malpractice)
- Davis v. Univ. of W. Va. Bd. of Trs., 278 F.3d 1288 (Fed. Cir. 2002) (summary judgment burden in complex patent cases)