Courtroom Success: James A. King

IADC member James A. King reports that he won a successful appeal in Davis v. Brouse McDowell, the Federal Circuit’s first precedential patent law malpractice decision issued in 2010. The case involved an inventor who claimed that a partner of an Ohio-based law firm committed malpractice in prosecuting both domestic and foreign patent applications for her inventions. The district court granted summary judgment for the law firm and the partner, and the Federal Circuit affirmed.

The decision addressed two interesting questions unique to patent law malpractice claims. The first involves the jurisdiction of federal courts to hear these claims. The Federal Circuit agreed with the district court that federal courts have exclusive jurisdiction under 28 U.S.C. § 1338 over legal malpractice claims that require resolution of a substantial question of federal patent law. The second was the application of the “case-within-a-case” doctrine to the issue of proximate cause. In particular, the Federal Circuit concluded that the doctrine would apply (here under Ohio law) if the plaintiff’s theory of recovery was that she would have received patents “but for” the defendants’ alleged negligence. Because the plaintiff in Davis asserted that her inventions would have received patents in the U.S. and internationally were it not for the lawyer’s malpractice, she necessarily had to prove that her inventions were patentable.

In the end, the district court and the Federal Circuit found that the plaintiff failed to meet her burden on causation because her expert failed to offer reliable testimony that her inventions were patentable.