Justia Legal Ethics Opinion Summaries

In an infringement suit, the district court declared Minton’s patent invalid under the “on sale” bar since he had leased his interactive securities trading system to a brokerage more than one year before the patent application, 35 U. S. C. 102(b). Seeking reconsideration, Minton argued for the first time that the lease was part of testing and fell within the “experimental use” exception to the bar. The Federal Circuit affirmed denial of the motion, concluding that the argument was waived. Minton sued for legal malpractice in Texas state court. His former attorneys argued that Minton’s claims would have failed even if the experimental-use argument had been timely raised. The trial court agreed. Minton then claimed that the court lacked jurisdiction under 28 U. S. C. 1338(a), which provides for exclusive federal jurisdiction over any case “arising under any Act of Congress relating to patents.” The Texas Court of Appeals rejected Minton’s argument and determined that Minton failed to establish experimental use. The state’s highest court reversed. The Supreme Court reversed, holding that Section 338(a) does not deprive state courts of subject matter jurisdiction over Minton’s malpractice claim. Federal law does not create that claim, so it can arise under federal patent law only if it necessarily raises a stated federal issue, actually disputed and substantial, which may be entertained without disturbing an approved balance of federal and state judicial responsibilities. Resolution of a federal patent question is “necessary” to Minton’s case and the issue is “actually disputed,” but it does not carry the necessary significance. No matter the resolution of the hypothetical “case within a case,” the result of the prior patent litigation will not change. Nor will allowing state courts to resolve these cases undermine development of a uniform body of patent law. View "Gunn v. Minton" on Justia Law

The two patents in suit relate to systems for minimizing the cost of placing long-distance telephone calls. Mediatrix manufactures and sells equipment that modifies existing telephone systems to convert them to voice-over-Internet-protocol systems. Over the course of infringement litigation, plaintiff (RTI) was ordered on four separate occasions to respond to a specific contention interrogatory propounded by Mediatrix: “Separately for each claim of the Patents-in-suit that [RTI] contends is infringed, state the basis for that contention, including without limitation, identification on an element-by-element basis of the component, structure, feature, functionality, method or process of each accused Mediatrix product that allegedly satisfies each element.” A magistrate determined that RTI never adequately responded to the interrogatory and that the failure to comply with the court’s orders was willful, and recommended dismissing the case and imposing monetary sanctions against RTI’s attorney, Hicks, and RTI in the amount of $86,965.81, to be split evenly between them. The district court adopted the recommendation. Hicks appealed the monetary sanction. RTI did not appeal. The Federal Circuit affirmed. View "Rates Tech., Inc. v. Mediatrix Telecom, Inc." on Justia Law

This case arose from a trademark infringement suit involving the sale of counterfeit versions of defendant's hoisin sauce. The district court subsequently imposed sanctions in fees and costs pursuant to FRCP 11 against plaintiffs and their attorneys in favor of defendant. The attorneys appealed, contending that the district court erred in its application of Rule 11. Defendant cross-appealed, contending that the district should have awarded substantially more in fees and costs and moved to sanction the attorneys for filing a purportedly frivolous appeal. The court held that the safe harbor requirement under Rule 11 was satisfied in these circumstances; the attorneys have failed to show that the district court abused its discretion in concluding that the action was frivolous; nor have the attorneys shown that the district court abused its discretion in deciding to impose monetary sanctions. The court rejected defendant's arguments on cross appeal and affirmed the judgment of the district court. View "Star Mark Mgmt., Inc. v. Koon Chun Hing Kee Soy & Sauce Factory, Ltd." on Justia Law

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

This case involved intellectual property related to the Superman character created by writer Jerome Siegel and illustrator Joe Schuster. In 2010, D.C. Comics filed a lawsuit against Marc Toberoff, owner of a joint venture with the heirs of Shuster and Siegel (Heirs), the Heirs, and three entities in which Toberoff owned a controlling interest (collectively, petitioners), claiming that Toberoff interfered with its contractual relationships with the Heirs. Toberoff had hired lawyer David Michaels to work for one of his companies. Michaels remained in Toberoff's employ for only about three months before absconding with copies of several documents from the Siegel and Shuster files. These documents formed the basis of this lawsuit. About a month after the suit was filed, Toberoff asked the U.S. Attorney to investigate Michaels and, in response, the U.S. Attorney's Office issued a grand jury subpoena for the documents at issue as well as a letter stating that if Toberoff voluntarily complied with the subpoena, the Government would "not provide the...documents...to non-governmental third parties except as may be required by law or court order." At issue was whether a party waived attorney-client privilege forever by voluntarily disclosing privileged documents to the federal government. Given that Congress has declined broadly to adopt a new privilege to protect disclosures of attorney-client privileged materials to the government, the court would not do so here. The court also rejected petitioner's assertion that even if the court rejected selective waiver as a general matter, the court should enforce a purported confidentiality agreement based upon the letter from the U.S. Attorney's Office where petitioners have provided no convincing reason that post hoc contracts regarding how information could be revealed encouraged frank conversation at the time of the advice. The court further rejected petitioners' remaining claims and denied the petition for mandamus. View "Pacific Pictures Corp., et al. v. USDC-CALA" on Justia Law

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

This case arose out of patent infringement litigation. At issue was whether federal courts possess exclusive subject matter jurisdiction over state-based legal malpractice claims that require the application of patent law. The federal patent issue presented here was necessary, disputed, and substantial within the context of the overlying state legal malpractice lawsuit. Additionally, the patent issue could be determined without creating a jurisdictional imbalance between state and federal courts. Therefore, the court concluded that exclusive federal jurisdiction existed in this case. Accordingly, without reaching the merits of the legal malpractice claim, the court reversed the court of appeals' judgment and dismissed this case. View "Minton v. Gunn, et al." on Justia Law

In a suit under the Copyright Act, 17 U.S.C. 106, described by the court as the equivalent of hand-to-hand combat, the plaintiff settled with some defendants for $30,000. After trial plaintiff obtained injunctive relief and statutory damages in the amount of $40,000 against others, offset by the $30,000 settlement. The court awarded $98,745 in attorney fees; a motion for costs, initially denied, remained pending. The First Circuit affirmed, first noting that the district court had cured a jurisdictional defect by awarding $3,413.05 in costs. The district court correctly applied the lodestar method. Although the fees exceed the award, the violation was willful and the injunctive relief may be worth more that the award of damages. While a rejected Rule 68 offer, not improved upon at trial, obligates the plaintiff to pay the defense costs incurred subsequent to the rejection the offer plaintiff made before trial was not a Rule 68 offer.