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Court Shoots Down Patent Malpractice Lawsuit Against Gibbons

By Tanya Roth, Esq. on May 04, 2012 | Last updated on March 21, 2019

Last week, we reported on a patent malpractice case that was brought in the Federal Circuit Court of Appeals. The Federal Circuit, while the proper court for patent infringement cases, can also be the proper court to bring an action for malpractice in patent law.

The law firm of Gibbons P.C. was sued in the Federal Circuit by Herman Minkin and H&M Aeronaut Tool Company, Inc. The plantiffs' alleged that the law firm committed legal malpractice in prosecuting the patent application for a hand tool called "extended reach pliers."

The lawsuit arose when a competitor of H&M devised a similar product and brought it to market. H&M sued the law firm, alleging that the patent had been so negligently drafted that the doors had been wide open for copycats.

The plaintiff alleged that there could have been alternate claim language in the patent application, which would have prevented infringement or at least could have been used to enforce the patents.

While malpractice is typically an area of state law, patent malpractice can sometimes contain more intricate issues of law. That's why claims for patent malpractice may be brought in the Federal Circuit Court of Appeals. The key requirement is that the patent malpractice claim must contain a well-pleaded issue of substantive law.

Here, the Federal Circuit affirmed the decision in favor of the law firm. The court held that the plaintiff failed to present a genuine dispute of a material fact regarding causation. In applying New Jersey state law, the court stated that the element of causation was a necessary element in New Jersey malpractice lawsuits.

While the plaintiffs' expert witness testified that alternative claim language could have been used, the expert failed to show how that language would defeat the obviousness test.

As a result, the court held in favor of Gibbons.

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