The Federal Circuit Court of Appeals has determined that a patent holder did not introduce sufficient evidence to prove that hypothetical alternative patent claims would have been patentable and thus, as a matter, of law, could not show that the law firm which prepared his patent committed malpractice by drafting the claims “so narrowly as to offer virtually no protection against competitors, resulting in lost-sale damages.” Minkin v. Gibbons, P.C., No. 2011-1178 (Fed. Cir., decided May 4, 2012). So ruling, the court affirmed the district court’s grant of the defendant’s motion for summary judgment.
The court also confirmed that its precedent recognizes its jurisdiction “in patent attorney malpractice cases such as this one, in which the plaintiff is required to establish that, but for attorney negligence, he would have obtained valid claims of sufficient scope that competitors could not easily avoid.” Concurring, Judge Kathleen O’Malley reiterated her call for the court to re-examine its precedent on this issue, opining that it is incorrect and inconsistent with controlling U.S. Supreme Court case law.