Articles Posted in Professional Malpractice & Ethics

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In the 1990s, AT&T obtained patents covering the transfer of packetized voice traffic between cellular base stations and switching centers. In 1996, AT&T assigned the patents to Lucent, which later assigned them to Avaya. In 2008, Avaya sold the patents for $2 million to High Point, reserving an interest in any proceeds obtained through litigation. High Point is based in Luxembourg and does not practice the patents. Within three days, High Point began sending demand letters asserting infringement, including to Sprint. Beginning in 1995, Sprint had built a network based on Code Division Multiple Access (CDMA), which allows multiple cellphone users to share the same radio frequency. CDMA is now standard. AT&T (later Lucent) supplied equipment for the CDMA network. As that network grew, Sprint used unlicensed equipment from several vendors. In 2004, Sprint began upgrading the Lucent equipment with Motorola equipment. Motorola was not a party to the Lucent-Sprint licensing agreement. In 2006, Alcatel purchased Lucent. High Point claims that act terminated any license for Sprint’s use of Lucent equipment. Nortel began selling equipment to Sprint. Nortel was no longer a licensee to the patents. No infringement concerns were raised until 2008, when High Point sued, asserting violation of the licensing agreements and that the Sprint network operated through the combination of licensed and unlicensed equipment to facilitate the transmission of voice call traffic in an infringing manner. The Federal CIrcuit affirmed summary judgment, based on equitable estoppel. View "High Point SARL v. Sprint Nextel Corp." on Justia Law

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In 2005, NeuroRepair retained Nath Law Group for prosecution of patent applications. NeuroRepair became dissatisfied and requested that Nath transfer its files to another law firm to continue prosecution before the USPTO. Nath withdrew from representation of NeuroRepair before the USPTO, but continued to assist NeuroRepair with other matters. NeuroRepair filed suit in 2009, alleging professional negligence, breach of fiduciary duty, breach of written contract, breach of oral contract, breach of implied covenant of good faith and fair dealing, negligent misrepresentation, and false promise. Nath removed the case to federal court on the ground that it was “a civil action relating to patents.” After judgment in Nath’s favor in 2012, NeuroRepair appealed, challenging the court’s subject matter jurisdiction in light of the Supreme Court’s 2013 pronouncement in Gunn v. Minto. The Federal Circuit vacated, with instructions to remand to California state court; no federal issue is necessarily raised, because any federal issues raised are not substantial in the relevant sense. Federal court resolution of malpractice claims that do not raise substantial issues of federal law would usurp the important role of state courts in regulating the practice of law within their boundaries, disrupting the federal-state balance approved by Congress. View "NeoroRepair, Inc. v. Nath Law Grp." on Justia Law

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Sneed is the surviving spouse of Reginald, who served on active duty 1964-1968 and suffered service-connected disabilities, including post-traumatic stress syndrome, post-concussion syndrome, degeneration of the vertebrae, narrowing of the spinal column, tinnitus, a perforated tympanic membrane, and scarring of the upper extremities. In 2001, Reginald fell and suffered a spinal cord contusion, rendering him a quadriplegic. In 2003, he was living in a nursing home for paralyzed veterans. There was a fire and all of the residents died of smoke inhalation. Sneed sought dependency and indemnity compensation, 38 U.S.C. 1310, alleging that her husband’s service-connected disabilities were a cause of his death. The VA denied the claim. The Board affirmed. Sneed’s notice of appeal was due by August 3, 2011. Sneed retained attorney Eagle, communicated with Eagle’s office “for a year or longer” and stated that “Eagle knew that there was a deadline.” On August 2, 2011 Sneed received a letter stating that Eagle would not represent Sneed in her appeal. Failing to find new counsel, Sneed filed notice of appeal on September 1, 2011, with a letter explaining her late filing. The Veterans Court dismissed the appeal as untimely. The Federal Circuit vacated, holding that attorney abandonment can justify equitably tolling the deadline for filing an appeal. View "Sneed v. Shinseki" on Justia Law

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Plaintiff worked as an airplane mechanic, in the Navy and for several airlines. In the 1960s, he devised a tool that could reach deep inside airplane engines without disassembling external components. In 2000, a patent issued to plaintiff for the extended reach pliers, based on an application written and prosecuted by defendant. Danaher, a customer of plaintiff's business, subsequently developed its own version of the ERP and began competing against the device. Plaintiff sued for malpractice, alleging that the patent was so negligently drafted that it offered no meaningful protection against infringers. Its expert proposed alternate claim language that allegedly could have been enforced against Danaher. The district court granted defendant summary judgment, based on the element of causation. The Federal Circuit affirmed. Plaintiff did not raise a genuine dispute of material fact as to the patentability of its alternate claims. Plaintiff failed to raise a single material fact in dispute as to the nonobviousness of the proposed alternate claims. View "Minkin v. Gibbons, P.C." on Justia Law

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Landmark invented an LED billboard and retained Kohler to file a patent application. Kohler filed the 096 application. USPTO indicated that the application contained multiple inventions. Kohler pursued two claims and withdrew others, intending that withdrawn claims would be pursued in divisional applications, to benefit from the 096 filing date. Kohler submitted an incomplete (916) divisional application, not using a postcard receipt to enable prompt notification of deficiencies. Months later, PTO issued notice of incomplete application. Kohler had changed firms. The anniversary of the 096 application’s publication passed; the 096 application became prior art against the 916 application under 35 U.S.C. 102(b). The attorneys did not immediately notify Landmark. Their petition to grant the 916 application an earlier filing date was dismissed. Landmark eventually filed suit alleging malpractice, negligence, and breach of fiduciary duty and reached a partial settlement. The state court dismissed remaining claims for lack of subject matter jurisdiction. Landmark filed the same claims in federal court, adding claims for breach of contract and fraud. The district court dismissed all except the fraud claim under a one-year limitations period and later dismissed the fraud claim under a three-year limitations period. The Federal Circuit reversed. Under California equitable tolling law, the state law fraud claim was timely filed. View "Landmark Screens, L.L.C. v. Morgan, Lewis & Bockius, L.L.P" on Justia Law

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In 1999 Beasley filed a patent application for personalized postage stamps. In 2001 the PTO issued notice of allowance. Beasley then entered into a licensing agreement with Avery, specifying that Avery would assume responsibility for prosecution of the patent application and would pay patent prosecution expenses. Beasley appointed Renner to prosecute his application. A Renner attorney filed a supplemental information disclosure statement concerning prior art references. The PTO issued a second notice of allowance. Beasley transferred ownership USPPS. USPPS and Avery entered into an agreement. Later, the PTO vacated its notice of allowance and issued final rejections. Beasley and USPPS alleged that Avery mismanaged the application. Beasley’s suit for was dismissed for lack of standing. USPPS filed suit, alleging breach of fiduciary duty and fraud, based on Avery’s alleged representation that Beasley was the client of Renner. The district court granted summary judgment for defendants. The Fifth Circuit transferred to the Federal Circuit, finding that jurisdiction was based, in part, on 28 U.S.C. 1338 and that the alleged malpractice involves a question of patentability, even if no patent actually issued. The Federal Circuit affirmed, holding that it had jurisdiction and that the complaint was untimely. View "USPPS, Ltd. v. Avery Dennison Corp." on Justia Law