Herman Minkin & H&M Aeronaut Tool Co. v. Gibbons, P.C.

Citation680 F.3d 1341,102 U.S.P.Q.2d 1573
Decision Date04 May 2012
Docket NumberNo. 2011–1178.,2011–1178.
PartiesHerman MINKIN and H & M Aeronaut Tool Co., Inc., Plaintiffs–Appellants, v. GIBBONS, P.C., Defendant–Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

OPINION TEXT STARTS HERE

Patrick T. Collins, Franzblau Dratch, of Livingston, NJ, argued for plaintiffs-appellants.

Stephen R. Long, Drinker Biddle & Reath, LLP, of Florham Park, NJ, argued for defendant-appellee. With him on the brief was Stacey A. Hyman.

Before RADER, Chief Judge, O'MALLEY and REYNA, Circuit Judges.

Opinion for the court filed by Circuit Judge REYNA. Circuit Judge O'MALLEY concurs in the result.

REYNA, Circuit Judge.

Mr. Herman Minkin and H & M Aeronaut Tool Company, Inc. (H & M) (collectively “Minkin”), allege that the law firm of Gibbons, P.C. (Gibbons) committed legal malpractice in prosecuting the patent application for a hand tool called “extended reach pliers” (“ERP”). In early 2000, U.S. Patent No. 6,012,363 (“the '363 patent”) issued to Mr. Minkin, the sole inventor, based on an application written and prosecuted by Gibbons. The Danaher Tool Company (“Danaher”), a Minkin customer, subsequently developed its own version of the ERP based on a simple design around and began competing against the Minkin device. Minkin sued Gibbons, alleging that the '363 patent was so negligently drafted that it offered no meaningful protection against infringers. In the malpractice litigation, Minkin's expert proposed alternate claim language that allegedly could have been patented and enforced against Danaher. The district court granted summary judgment in favor of Gibbons, finding that Minkin failed to raise a genuine dispute of material fact regarding causation, a necessary element in New Jersey legal malpractice cases. Minkin v. Gibbons P.C., No. 2:08–02451, 2010 WL 5419004, at *1, *7–8, 2010 U.S. Dist. LEXIS 135847, at *1, *21 (D.N.J. Dec. 23, 2010). Because Minkin did not raise a genuine dispute of material fact as to the patentability of its alternate claims, we agree that the causation elementwas not shown as a matter of law and we affirm.

I. Background

Mr. Minkin worked as an airplane mechanic, serving in the United States Navy and as an employee of several airlines. In the 1960s, he devised a tool that could reach deep inside airplane engines without disassembling external components. The ERP was designed with two pivots instead of one such that the jaws could grip in very narrow areas. Mr. Minkin drew a sketch of his ERP, reproduced below:

Image 1 (3.93" X .9") Available for Offline Print

In 1996, Mr. Minkin sought to patent his invention and retained the Gibbons law firm.1 Mr. Minkin gave the prosecuting attorneys access to his sketches, a working prototype, and a prior art search conducted years earlier by an independent firm. The search revealed at least eleven relevant prior art patents, many teaching multipivoted gripping tools dating back to the nineteenth century. As a cost-saving measure, Mr. Minkin requested that Gibbons not supplement the prior art search.

Gibbons prepared and filed application No. 08/660,119 (“the '119 application”) with the United States Patent and Trademark Office (“PTO”) on June 7, 1996. The '119 application included three independent claims (claims 1, 10, and 14) and several dependent claims. Originally filed claim 1 was directed to a tool having two handles joined by a first pivot, and two jaw elements joined by a second pivot. The claimed length of the long end of the handle was twice as long as the short end, and the claimed length of the working end of the jaw was at least twice as long as the tail end of the jaw.

The examiner rejected all claims in an office action dated October 22, 1996, citing, inter alia, anticipation and obviousness under 35 U.S.C. §§ 102 and 103. The examiner relied primarily on a 1903 reference she uncovered, U.S. Patent No. 727,279 (“Brindos '279”), disclosing tiehandling tongs. Brindos '279 was cited by the examiner for both the § 102(b) and § 103(a) rejections: original claims 1 and 4 were rejected as anticipated by Brindos '279; the balance of the claims were rejected as obvious over Brindos '279 alone or in combination with teachings of other prior art references.

Gibbons responded to the office action with an amendment dated December 19, 1996 (“the Amendment). The Amendment added the following language to the end of claim 1: “wherein the distance between the second end and said first pivot on each handle element is at least three times longer than the distance between said tail end and said second pivot on each jaw element.” Joint Appendix (“J.A.”) 851. Plainly stated, the Amendment required a minimum 3:1 ratio between the lengths of the components connecting the two pivots of the ERP. The Amendment, Minkin argued, provided for an increased mechanical advantage previously unavailable.Minkin, 2010 WL 5419004, at *1–2, 2010 U.S. Dist. LEXIS 135847, at *4.

The examiner issued another office action dated April 1, 1997. While the Amendment successfully overcame the anticipation rejection, Brindos '279 was again cited by the examiner as the basis for a continuing obviousness rejection, now including amended claim 1. The examiner stated that even though Brindos '279 did not disclose the relative lengths of the handles as claimed in the '119 application, it would have been obvious to one of ordinary skill in the art at the time the ERP was made to have placed the pivot points in the claimed locations. Brindos '279 was also cited in view of other prior art, including U.S. Patent Nos. 2,743,726 (“Grieshaber”), 3,384,411 (“Zlotnicki”), and 3,092,152 (“Neff”) to reject as obvious the remainder of Minkin's claims.

On August 1, 1997, Gibbons filed a continuation-in-part, serial no. 08/904,524 (“the CIP application”), and abandoned the '119 application. The CIP application carried forward claim 1 as modified in the Amendment, added drawings, and included a 35 U.S.C. § 132 declaration directed to the examiner's earlier obviousness rejections.

The examiner conducted an interview on July 14, 1999. During the interview, the examiner handled a working ERP prototype and, as Minkin tells it, indicated that one day every mechanic would have an ERP in their toolbox and that a patent would issue on Minkin's CIP application. Following the interview, the examiner noted on the record that she had changed her opinion as to patentability, but provided no reasons. The '363 patent issued on January 11, 2000, with the 3:1 pivot ratio limitation at the end of independent claim 1.2 Figure 2 of the ' 363 patent, is reproduced below:

Image 2 (2.56" X 4.01") Available for Offline Print Mr. Minkin, through his new-formed company, H & M, began manufacturing and marketing the patented ERP. By 2004, major tool companies, including Danaher (a supplier for downstream retailers such as Sears and NAPA), were significant customers. Minkin, 2010 WL 5419004, at *2, 2010 U.S. Dist. LEXIS 135847, at *5–6. In mid–2007, however, Minkin learned that Danaher had successfully designed around the constraints of the '363 patent to make and sell its own version of the ERP. Minkin, recognizing that the Danaher tool was non-infringing as it avoided the 3:1 ratio for the pivots, sued Gibbons for patent prosecution malpractice in state court.

The case was removed to the United States District Court for the District of New Jersey. Id. at *2–3, 2010 U.S. Dist. LEXIS 135847 at *7. Minkin alleged that Gibbons committed malpractice by negligently drafting the claims in the ' 363 patent so narrowly as to offer virtually no protection against competitors, resulting in lost-sale damages. Id. at *2, 2010 U.S. Dist. LEXIS 135847 at *6. The district court applied state law and this court's guidance that an essential element of Minkin's causation proof would be to show that hypothetical alternate claims would have been patentable. Id. at *4–5, 2010 U.S. Dist. LEXIS 135847 at *12–13 (citing Davis v. Brouse McDowell, L.P.A., 596 F.3d 1355, 1360–61 (Fed.Cir.2010)). The parties agreed that for such a patentability determination in New Jersey, the trial court should perform a “suit-within-a-suit” or “case-within-a-case analysis. See Minkin, 2010 WL 5419004, at *4–5, 2010 U.S. Dist. LEXIS 135847, at *12–13.

To prove the patentability of alternate claims with additional breadth, Minkin offered the expert testimony of Richard Gearhart (“Gearhart”), a patent attorney. Minkin introduced two expert reports prepared by Gearhart. The initial expert reportoffered two alternate claims for the Minkin ERP, which Gearhart asserted could have been patented:

1. An article of manufacture, comprising:

two handles, each handle having a holding end, a handle intermediate point, and a connecting end, the handles being pivotably connected at the handle intermediate point;

two jaw pieces, each jaw piece having a gripping end, a jaw intermediate point, and a second connecting end, the handles being pivotably connected at the jaw intermediate point;

wherein each connecting end is pivotably connected to a second connecting end; and

the distance between the handle intermediate point and the connecting end is greater than the distance between the second connecting end and the jaw intermediate point.

or

1. A device comprising;

a first pair of parallel arms having a first connecting end and a handle end, said first parallel arms able to swing about a first offset hinge, said first offset hinge located between said first connecting end and said handle end;

a second pair of parallel arms having a straight clasping end and a second connecting end, said second set of parallel arms able to swing about a second offset hinge, said second offset hinge located between said straight clasping end and said second connecting end;

each said second connecting end being capable of forming an offset hinge by attaching to each said first connecting end; and

a motion of said first pair of parallel arms about said first offset hinge being...

To continue reading

Request your trial
32 cases
  • Stathis v. United States
    • United States
    • U.S. Claims Court
    • April 1, 2015
    ...reh'g and reh'g en banc denied (Fed. Cir. 2014); Ladd v. United States, 713 F.3d 648, 651 (Fed. Cir. 2013); Minkin v. Gibbons, P.C., 680 F.3d 1341, 1349 (Fed. Cir. 2012); Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1309-10 (Fed. Cir. 2012); Advanced Fiber Techs. (AFT) Trust v. J & L Fibe......
  • Castillo v. United States
    • United States
    • U.S. Claims Court
    • March 1, 2023
    ...reh'g and reh'g en banc denied (Fed. Cir. 2014); Ladd v. United States, 713 F.3d 648, 651 (Fed. Cir. 2013); Minkin v. Gibbons, P.C., 680 F.3d 1341, 1349 (Fed. Cir. 2012); Consol. Coal Co. v. United States, 615 F.3d 1378, 1380 (Fed. Cir.), reh'g and reh'g en banc denied (Fed. Cir. 2010), cer......
  • BES Design/Build, LLC v. The United States
    • United States
    • U.S. Claims Court
    • November 30, 2021
    ... ... requirement to use the IDG as a design tool in all facility ... planning, design, and ... Cir. 2013); ... Minkin v. Gibbons, P.C. , 680 F.3d 1341, 1349 (Fed ... ...
  • Lucier v. United States, 16-865L
    • United States
    • U.S. Claims Court
    • June 1, 2018
    ...reh'g and reh'g en banc denied (Fed. Cir. 2014); Ladd v. United States, 713 F.3d 648, 651 (Fed. Cir. 2013); Minkin v. Gibbons, P.C., 680 F.3d 1341, 1349 (Fed. Cir. 2012); Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1309-10 (Fed. Cir. 2012); Advanced Fiber Techs. (AFT) Trust v. J & L Fibe......
  • Request a trial to view additional results
1 books & journal articles
  • Rising Confusion About "arising Under" Jurisdiction in Patent Cases
    • United States
    • Emory University School of Law Emory Law Journal No. 69-3, 2019
    • Invalid date
    ...O'Malley penned several opinions objecting to the Federal Circuit's then-expansive jurisdictional rule, see Minkin v. Gibbons, P.C., 680 F.3d 1341, 1353 (Fed. Cir. 2012) (O'Malley, J., concurring); Landmark Screens, LLC v. Morgan, Lewis, & Bockius, LLP, 676 F.3d 1354, 1367 (Fed. Cir. 2012) ......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT