Stephen E. Byrne v. Wood, Herron & Evans, LLP et al.


Docket No. 2011-1012

LOURIE, GAJARSA, O’MALLEY
November 18, 2011

Non-precedential

Brief summary: As a general rule, an inventor will be a person of at least ordinary skill in the relevant art. A finding regarding this point may not be required if “it does not affect the ultimate conclusion under § 103”, if it “applies the lowest level of skill (i.e., a layperson)”, or “the subject matter is ‘easily understandable'” (Chore-Time, FC 1983).

Summary: Byrne sued Wood, Herron & Evans, LLP et al. for malpractice while prosecuting his patent related to landscaping equipment. Black and Decker refused to license the patent, and then Byrne lost its infringement case due to the “generally planar . . . surface” limitation in each of the asserted claims (Federal Circuit Docket No. 2006-1523 (2007)). Byrne argued that his attorneys committed malpractice by introducing the “generally planar” limitation to obtain allowance of his claims. The case originated in Kentucky, where, “[t]o establish a claim for legal malpractice…a plaintiff must prove…“(1) that there was an employment relationship with the defendant/attorney; (2) that the attorney neglected his duty to exercise the ordinary care of a reasonably competent attorney in the same or similar circumstances; and (3) that the attorney’s negligence was the proximate cause of damage to the client” (Stephens, Ky. Ct. App. 2004). The general rule is that expert testimony is required to show the applicable duty of care and to show causation unless “negligence is so apparent that a layperson with general knowledge would have no difficulty recognizing it” (Stephens, Ky. Ct. App. 1965). A key issue in this case is whether the DC should have considered the inventor one of ordinary skill in the art regarding whether a “hypothetical claim” lacking the “generally planar” limitation could have issued (e.g., regarding anticipation / obviousness of the claim). Byrne argued that the DC erred in disqualifying him without making any finding of the level of skill in the art, and the FC agreed (citing Innovention Toys, FC 2011). Such a finding may not be required if “it does not affect the ultimate conclusion under § 103”, if it “applies the lowest level of skill (i.e., a layperson)”, or “the subject matter is ‘easily understandable'” (Chore-Time, FC 1983). However, the panel concluded that none of these exceptions applied in this case and, “[a]s a general rule, an inventor will be a person of at least ordinary skill in the relevant art” (Sundance, FC 2008; Phillips, FC 2005; CCS Fitness, FC 2002; Standard Oil, FC 1985). Thus, the DC decision was vacated and remanded.

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