Lead Opinion
Opinion for the court filed by Circuit Judge REYNA. Circuit Judge O’MALLEY concurs in the result.
Mr. Herman Minkin and H & M Aeronaut Tool Company, Inc. (“H & M”) (collectively “Minkin”), allege that the law firm of Gibbons, P.C. (“Gibbons”) committed legal malpractice in prosecuting the patent application for a hand tool called “extended reach pliers” (“ERP”). In early 2000, U.S. Patent No. 6,012,363 (“the '363 patent”) issued to Mr. Minkin, the sole inventor, based on an application written and prosecuted by Gibbons. The Danaher Tool Company (“Danaher”), a Minkin customer, subsequently developed its own version of the ERP based on a simple design around and began competing against the Minkin device. Minkin sued Gibbons, alleging that the '363 patent was sо negligently drafted that it offered no meaningful protection against infringers. In the malpractice litigation, Minkin’s expert proposed alternate claim language that allegedly could have been patented and enforced against Danaher. The district court granted summary judgment in favor of Gibbons, finding that Minkin failed to raise a genuine dispute of material fact regarding causation, a necessary element in New Jersey legal malpractice cases. Minkin v. Gibbons P.C., No. 2:08-02451,
I. Background
Mr. Minkin worked as an airplane mechanic, serving in the United States Navy and as an employee of several airlines. In the 1960s, he devised a tool that could reach deep inside airplane engines without disassembling external components. The ERP was designed with two pivots instead of one such that the jaws could grip in very narrow areas. Mr. Minkin drew a sketch of his ERP, reproduced below:
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In 1996, Mr. Minkin sought to patent his invention and retained the Gibbons law firm.
Gibbons prepared and filed application No. 08/660,119 (“the '119 application”) with the United States Patent and Trademark Office (“PTO”) on June 7, 1996. The '119 application included three independent claims (claims 1, 10, and 14) and several dependent claims. Originally filed claim 1 was directed to a tool having two handles joined by a first pivot, and two jаw elements joined by a second pivot. The claimed length of the long end of the handle was twice as long as the short end, and the claimed length of the working end of the jaw was at least twice as long as the tail end of the jaw.
The examiner rejected all claims in an office action dated October 22,1996, citing, inter alia, anticipation and obviousness under 35 U.S.C. §§ 102 and 103. The examiner relied primarily on a 1903 reference she uncovered, U.S. Patent No. 727,279 (“Brindos '279”), disclosing tiehandling tongs. Brindos '279 was cited by the examiner for both the § 102(b) and § 103(a) rejections: original claims 1 and 4 were rejected as anticipated by Brindos '279; the balancе of the claims were rejected as obvious over Brindos '279 alone or in combination with teachings of other prior art references.
Gibbons responded to the office action with an amendment dated December 19, 1996 (“the Amendment”). The Amendment added the following language to the end of claim 1: “wherein the distance between the second end and said first pivot on each handle element is at least three times longer than the distance between said tail end and said second pivot on each jaw element.” Joint Appendix (“J.A.”) 851. Plainly stated, the Amendment required a minimum 3:1 ratio between the lengths of the сomponents connecting the two pivots of the ERP. The Amendment, Minkin argued, provided for an increased mechanical advantage previously unavail
The examiner issued another office action dated April 1, 1997. While the Amendment successfully overcame the anticipation rejection, Brindos '279 was again cited by the examiner as the basis for a continuing obviousness rejection, now including amended claim 1. The examiner stated that even though Brindos '279 did not disclose the relative lengths of the handles as claimed in the '119 application, it would have been obvious to one of ordinary skill in the art at the timе the ERP was made to have placed the pivot points in the claimed locations. Brindos '279 was also cited in view of other prior art, including U.S. Patent Nos. 2,743,726 (“Grieshaber”), 3,384,411 (“Zlotnicki”), and 3,092,152 (“Neff’) to reject as obvious the remainder of Minkin’s claims.
On August 1, 1997, Gibbons filed a continuation-in-part, serial no. 08/904,524 (“the CIP application”), and abandoned the '119 application. The CIP application carried forward claim 1 as modified in the Amendment, added drawings, and included a 35 U.S.C. § 132 declaration directed to the examiner’s earlier obviousness rejections.
The examiner conducted an interview on July 14, 1999. During the interview, the examiner handled a working ERP prototype and, as Minkin tells it, indicated that one day every mechanic would have an ERP in their toolbox and that a patent would issue on Minkin’s CIP application. Following the interview, the examiner noted on the record that she had changed her opinion as to patentability, but provided no reasons. The '363 patent issued on January 11, 2000, with the 3:1 pivot ratio limitation at the end of independent claim l.
Mr. Minkin, through his new-formed company, H & M, began manufacturing and marketing the patented ERP. By 2004, major tool companies, including Danaher (a supplier for downstream retailers such as Sears and NAPA), were significant customers. Minkin,
The case was removed to the United States District Court for the District of New Jersey. Id. at *2-3,
To prove the patentability of alternate claims with additional breadth, Minkin offered the expert testimony of Richard Gearhart (“Gearhart”), a patent attorney. Minkin introduced two expert reports prepared by Gearhart. The initial expert re
1. An article of manufacture, comprising:
two handles, each handle having a holding end, a handle intermediate point, and a connecting end, the handles being pivotably connected at the handle intermediate point;
two jaw pieces, each jaw piece having a gripping end, a jaw intermediate point, and a second connecting end, the handles being pivotably connected at the jaw intermediate point;
wherein each connecting end is pivot-ably connected to a second connecting end; and
the distancе between the handle intermediate point and the connecting end is greater than the distance between the second connecting end and the jaw intermediate point,
or
1. A device comprising;
a first pair of parallel arms having a first connecting end and a handle end, said first parallel arms able to swing about a first offset hinge, said first offset hinge located between said first connecting end and said handle end;
a second pair of parallel arms having a straight clasping end and a second connecting end, said second set of parallel arms able to swing about a second offset hinge, said second offset hinge located between said straight clasping end and said second connecting end;
each said second connecting end being capable of forming an offset hinge by attaching to each said first connecting end; and
a motion of said first pair of parallel arms about said first offset hinge being capable of causing a mutual motion of said second pair of parallel arms about said second offset hinge.
J.A. 164. Both of Gearhart’s alternate claims notably eliminated the 3:1 ratio limitation added by Gibbons through the Amendment. The initial Gearhart expert report mentioned no prior art except for Brindos '279, and indicated nothing about the impact of the prior art on the patentability of the alternate claims other than to state that they “would have avoided the cited prior art.” Id.; Minkin,
On December 6, 2009, a 37-page supplemental Gearhart expert report was served. The supplemental report compares the alternate claims to prior art in the context of anticipation, but there was no discussion of nonobviousness. Id. at *6, *7-8,
Gibbons moved for summary judgment pursuant to Federal Rule of Civil Procedure 56. In granting the summary judgment motion, the district court found that
Gearhart utterly fails to provide any sort of analysis with respect to the alleged nonobviousness of his claims and gives no opinions or explanation showing why his claims would not be deemed obvious. He makes no attempts to set forth the content of the prior art, to describe how the sample claims differ from the prior art, nor even to identify the level of ordinary skill in the field. Indeed, he makes nothing more than a bаld assertion that his samples “would have avoided the prior art” without explaining what he means by this, how he arrived at such a conclusion, or how it relates to obviousness. As such, thisstatement is merely an inadmissible net opinion that fails to shed any light on the question of obviousness.
Minkin,
The district court concluded that Min-kin’s expert did not “provide any sort of evidence demonstrating that his sample alternative claims are non-obvious. As such, he has failed to provide the necessary proof that a patentable alternative to the '363 patent exists.” Id. at *8,
II. Discussion
A. Jurisdiction
Analyzing jurisdiction, the district court found “that a substantial question of federal law exists and that resolution of this questiоn by the federal courts will not disrupt the balance of power between state and federal government.” Id. at *4,
State law patent attorney malpractice cases inherently pose complex jurisdictional issues.
B. “Suit-Within-a-Suit” Analysis
The crux of Minkin’s allegations is that Gibbons negligently drafted patent claims overly narrow in scope, constituting legal malpractice. Because state law cre
New Jersey law provides several ways of establishing proximate causation in malpractice cases, including a “suit-within-a-suit.” Garcia,
There can be no causation demonstrated under the suit-within-a-suit rubric for patent prosecution malpractice where any claim drawn to the alleged invention would have lacked patentability ab initio. Davis,
1. The Patentability of Minkin’s Alternate Claims
In granting summary judgment, the district court held that Minkin failed to raise
This court reviews a district court’s grant of summary judgment under the law of the regional circuit. Lexion Med., LLC v. Northgate Techs., Inc.,
On appeal, Minkin argues that (a) it did not have the burden of showing the nonobviousness of the alternate claims at the summary judgment stage of the proceeding, (b) evеn if it did have the burden at the summary judgment stage, the nonobviousness of the alternate claims was shown in the 37-page Gearhart supplemental report, and (c) the trial court should have inferred the nonobviousness of Gearhart’s alternative claim language because the '363 patent issued after an in-person interview. None of these arguments has merit.
a. Minkin Had the Burden of Showing Nonobviousness
Minkin contends, based on this court’s opinion in Davis,
[W]e reject the suggestion that Ms. Davis would have had to identify claims for her inventions or perform a patentability analysis similar to that required in an invalidity trial. Ms. Davis’s ultimate burden in this case is to establish the likelihood that her inventions would have been held patentable on examination in the PTO____ At the summary judgment stage, she had only to introduce evidence sufficient to establish an issue of material fact as to patentability. Ms. Davis could have satisfied this initial burden in any number of ways____Mr. O’Shaughnessy [plaintiffs expert] could have reviewed the prior art references cited in the office actiоns and discussed their effect on patentability.
Minkin misreads Davis. The statement above does not establish a more deferential standard for malpractice cases specifically; rather, it is a routine observation about evidentiary showings required under Rule 56 generally. Compare id. with Celotex Corp.,
Patentability necessarily includes the condition that an invention consist of non-obvious subjeсt matter. 35 U.S.C. § 103; Graham v. John Deere Co.,
Minkin defends that it would have been too cumbersome in the first instance to “prove a negative” by addressing every potential combination of prior art that could be used in an obviousness rejection.
We recognize that applicants do not typically prove “validity” against all prior art, and only show that claims are not invalid over references cited against them. But the order of typical prosecution practice is irrelevant to the procedural posture here. Malpractice cases under a suit-within-a-suit framework require as part of the plaintiffs case-in-chief a demonstration of
Rule 56 requires a party opposing summary judgment to present specific facts demonstrating that there exists a genuine dispute оf material fact to be resolved by a factfinder. Id. at 324,
b. The Supplemental Report Was Not Sufficient
Minkin argues that even if it did have the burden as to nonobviousness, it met that burden by thoroughly analyzing sixteen prior art references and their relationship to the alternate claims. While admitting that there is no express discussion of § 103(a) in any report, Minkin argues that thе district court ignored the nonobviousness implications of Gearhart’s 37-page supplemental report.
The district court did consider and address Gearhart’s 37-page supplemental expert report in detail. See Minkin,
We agree. Gearhart’s supplemental expert report only states his view that the alternate claims would have overcome a § 102 challenge. We have held, however, that anticipation and obviousness are separate conditions of patentability, requiring different tests and different elements of proof. Cohesive Techs., Inc. v. Waters Corp.,
We find that the 37-page Gearhart report contains nоthing to assist the trier of fact with respect to the unique tests and proofs of § 103(a), and provides no insight into the question of whether the alternate claims would ultimately have been allowed by the PTO. The movant may prevail under Rule 56 by exposing “the absence of evidence to support the nonmoving party’s case.” Celotex Corp.,
c. No Inference of Patentability from the '363 Patent
Minkin argues that since that the examiner ultimately granted the '363 patent after an office interview, the court should infer from that favorable history that Gearhart’s alternate clаim language would also be deemed nonobvious. The district court refused to recognize that a “presumption of non-obviousness attaches” in this context, calling this Minkin argument “weak,” “unsupported,” and “contrary to common sense.” Minkin,
The challenge for Gibbons all along, as noted by the district court, was drafting broadly in the face of such a crowded art field. Id. at *6-7,
III. Conclusion
Providing no evidence of nonobviousness, Minkin failed to establish a genuine dispute of material fact as to the patentability of its alternate claims. Because Minkin did not carry its burden on causation, the district court’s summary judgment in favor of Gibbons is
AFFIRMED.
No costs.
Notes
. During the period at issue, Gibbons was known as Crummy, Del Deo, Dolan, Griffinger & Vecchione, P.C.
. Claim 1 of the '363 patent reads in its entirety:
1. A tool, comprising: two handle elements, wherein each handle element has a first end and a second end;
a first pivot joining each handle element together between said first end and said second end, wherein the distance betweеn said first end and said first pivot is more than twice as long as the distance between said second end and said first pivot;
two jaw elements, wherein each jaw element has a working head end and an opposite tail end and wherein the tail end of said two jaw elements is pivotably connected to the second end of said two handle elements, respectively;
a second pivot joining each jaw element together between said working head end and said tail end, wherein the distance between said working head end and said second pivot is at least twice as long as the distance between said tail end and said second pivot; and
wherein the distance between the second end and said first pivot on each handle element is at least approximately three times longer than the distance between said tail end and said second pivot on each jaw element.
Col.7,11.27-49.
. See Concurring Opinion at 1353 (O'Malley, J., concurring); see also Byrne v. Wood, Herron & Evans, LLP,
. The district court did not require that Min-kin prove the patentability of its alternative claims to the level of a "guarantee,” Minkin Br. at 15-17, 26, 30, and never suggested that anything more than preponderant evidence would be necessary to prevail.
. Minkin was also required to demonstrate that its proposed alternative claim language would have read on the Danaher tool. Min-kin,
Concurrence Opinion
concurring.
I concur in all aspects of the thoughtful majority opinion, save one. While I agree we are compelled to exercise jurisdiction over this matter, I do not agree it is “proper” that we do so. Majority Op. at 1347. As the majority notes in section II A., there is binding precedent that compels that we decide the merits of this case. I believe that precedent is incorrect, however, and inconsistent with controlling Supreme Court case law.
I explained why I believe this court should discontinue exercising jurisdiction over state law malpractice claims in Byrne v. Wood, Herron & Evans, LLP,