Upholding a district court’s grant of summary judgment, the U.S. Court of Appeals for the Federal Circuit held that conclusory expert witness testimony regarding the patentability of a lost or foregone patent right is insufficient to support the causation element of a legal malpractice claim. Davis v. Brouse McDowell, L.P.A., Case No. 09-1395 (Fed. Cir. Mar. 2, 2010) (Moore, J.).

The plaintiff, Heather Davis, is a solo inventor who developed a website, a search engine, social networking platform and business known as “The IP-Exchange.” On January 20, 2006, the plaintiff filed with the United States Patent and Trademark Office (USPTO) two provisional patent applications relating to the IP-Exchange website and search engine. Under U.S. patent law, in order to retain the January 20, 2006 priority date, Davis was required to file a utility application and PCT application within one year—by Monday, January 22, 2007. On January 17, 2007, Davis contacted Daniel Thomson, an attorney employed by the defendant, and requested that he prepare and file utility and Patent Cooperation Treaty (PCT) applications claiming benefit to the provisional applications. On January 22, 2007, Thomson filed only a utility application, which he admitted contained a poorly drafted specification. Thomson claims he intended to repair the application at a later time. Although instructed to file a PCT application, Thompson failed to do so on that date, waiting until January 25, 2007. Therefore, the PCT applications could not claim priority to the provisional applications. Ultimately, the plaintiff’s patent applications went abandoned.

The district court granted summary judgment in favor of the defendant, concluding that the plaintiff failed to establish a genuine issue of material fact as to the patentability of her inventions and therefore could not prevail on the causation element of her malpractice claim as a matter of law. Davis appealed.

On appeal, Davis argued that that the district court improperly granted the defendant’s motion for summary judgment. The Federal Circuit held that the district court had properly granted summary judgment. The Court found that, to prevail on a claim for legal malpractice based on negligent representation, the plaintiff must establish that the attorney owed a duty to the plaintiff, the attorney breached that duty and failed to conform to the standard required by law and that there is a causal connection between the conduct complained of and the resulting damage or loss. The Court held that plaintiff failed to establish the third element—that Thomson’s conduct actually caused her to lose any patent rights. Specifically, the Court found that plaintiff’s expert failed to provide any factual support that plaintiff’s inventions were patentable. Davis’ expert had not performed any prior art searches or any patentability analysis, nor had he identified any particular patent claims that could be made for plaintiff’s invention. Instead, the plaintiff’s expert provided a conclusory opinion that, but for the defendants’ legal malpractice, Davis would have been awarded a patent. The Court found that such an unsupported opinion does not create a genuine issue of material fact as to the patentability of plaintiff’s inventions. Because Davis failed to establish a genuine issue of material fact as to the patentability of her inventions, the Court held that she could not prevail on the causation element of her malpractice claim as a matter of law. As a result, the Federal Circuit held that the district court had properly granted summary judgment to the defendant.

Practice Note: Although the Court held that plaintiff’s expert had not provided any factual support to support his opinions, the court did provide guidelines of the types of proof a plaintiff could offer to support a claim for legal malpractice. The Court noted that the plaintiff’s ultimate burden is to establish the likelihood that her inventions would have been held patentable on examination in the USPTO or any applicable national patent office, in accordance with the criteria of patentability applied during examination. This burden could be met by reviewing the prior art cited by the patent office and discussing its affect on patentability.