Byrne v. Wood, Herron & Evans, LLP, 2011-1012
| Decision Date | 18 November 2011 |
| Docket Number | 2011-1012 |
| Parties | STEPHEN E. BYRNE, Plaintiff-Appellant, v. WOOD, HERRON & EVANS, LLP, DAVID S. STALLARD, KEVIN G. ROONEY, THEODORE R. REMAKLUS, P. ANDREW BLATT, AND WAYNE L. JACOBS, Defendants-Appellees. |
| Court | U.S. Court of Appeals — Federal Circuit |
NOTE: This disposition is non-precedential.
Appeal from the United States District Court for the Eastern District of Kentucky in case no. 08-CV-0102, Judge Danny C. Reeves.
JAMES A. JABLONSKI, Law Office of James A. Jablon-ski, of Denver, Colorado, argued for plaintiff-appellant.
J. ROBERT CHAMBERS, Wood, Herron & Evans, L.L.P., of Cincinnati, Ohio, argued for defendants-appellees.
Before LOURIE, GAJARSA,* and O'MALLEY, Circuit Judges.
Opinion for the court filed by Circuit Judge O'Malley. Circuit Judge Lourie joins Sections I, III, and IV of the opinion and concurs only in the result of Section II.
Stephen Byrne appeals from the district court's grant of summary judgment for Wood, Herron & Evans, LLP, and several lawyers from that law firm (collectively, "WHE"), on Byrne's claim for legal malpractice. The district court granted summary judgment for WHE on the sole ground that Byrne failed to offer technical expert testimony in opposition to WHE's motion for summary judgment, a finding the court made after sua sponte striking portions of Byrne's own affidavit relating to technical matters. Although Byrne is the inventor named on the patent at the center of this malpractice action, the court found that Byrne is not a person of ordinary skill in the art and, thus, not qualified to opine on technical aspects of the invention and prior art. Because the district court abused its discretion in striking Byrne's affidavit without identifying the relevant level of skill in the art and without considering that inventors normally possess at least ordinary skill in the field of invention, we vacate and remand the district court's decision for consideration of the merits of WHE's summary judgment motion.
This is a legal malpractice action in which Stephen Byrne alleges that WHE was negligent in failing to secure broader patent protection for his invention, which relates to an improvement to a grass and weed trimmer used in landscaping. Byrne alleges that, as a result of WHE's negligence, he was unsuccessful in a patent infringement lawsuit against Black & Decker Corporation and related entities (collectively, "Black & Decker"). Because thepresent appeal involves a narrow procedural issue, we only briefly recite the relevant factual background.
In 1989, Byrne was operating a landscaping company in which workers used flail trimmers, also called string trimmers, to trim around trees and fences and to edge sidewalks and curbs. After complaints about the appearance of lawn-edging work, Byrne developed an improvement to the flail trimmers. Specifically, Byrne's invention was the inclusion of a combined guide and guard mounted on the trimmer near the flail to allow uniform cutting, visually indicate where the flail was cutting, and stabilize the flail. Byrne retained WHE to prepare and prosecute a patent application for his invention, resulting in the issuance of United States Patent No. 5,115,870 ("the '870 patent") on May 26, 1992. Subsequently, Byrne sought and obtained a reissue patent, U.S. Patent No. RE 34,815 ("the '815 patent"), which: (1) expanded the scope of the claims by claiming a flail stabilizing surface; and (2) eliminated the limitation, in some claims of the '870 patent, that the guide rotate.
Claim 24 of the '815 patent is representative of the claims at issue in the underlying infringement action and recites:
'815 patent col.11 ll.17-40 (emphasis added). The "generally planar" language emphasized above is at the heart of the infringement action and Byrne's legal malpractice claim.
In late 2004, after unsuccessful licensing negotiations, Byrne sued Black & Decker in the United States District Court for the Eastern District of Kentucky, alleging that Black & Decker's sale of a string trimmer containing a U-shaped wire edge guard infringed the '815 patent. See Complaint, Byrne v. Black & Decker Corp., Case No. 2:04-cv-262 (E.D. Ky. Dec. 30, 2004), ECF 1. The district court ultimately granted summary judgment of non-infringement to Black & Decker, finding that the U-shaped wire guard did not meet the "generally planar . . . surface" limitation of the '815 patent, a limitation that was present in each of the claims Byrne asserted. Byrne v. Black & Decker Corp., 80 U.S.P.Q.2d 1686, 2006 WL 1117685, *5 (E.D. Ky. Apr. 27, 2006). On appeal, this court affirmed the district court's grant of summary judgment based on a different construction of the "generally planar . . . surface" limitation that is not relevant for purposes of the present appeal. Byrne v. Black & Decker Corp., No. 2006-1523, 2007 WL 1492101 (Fed. Cir. May 21, 2007).
On May 14, 2008, Byrne filed a legal malpractice action in Kentucky state court against WHE, which WHEtimely removed to the United States District Court for the Eastern District of Kentucky.1 See Notice of Removal, Byrne v. Wood, Herron & Evans, LLP, Case No. 2:08-cv-102 (E.D. Ky. May 30, 2008), ECF 1. Byrne moved to remand the case for lack of subject matter jurisdiction, a motion the district court denied. See Byrne v. Wood, Herron & Evans, LLP, 2008 WL 3833699 (E.D. Ky. Aug. 13, 2008). The court found that, although legal malpractice is a state law claim, it requires a "suit within a suit" analysis that turns on substantial questions of patent law, thus giving rise to jurisdiction under 28 U.S.C. § 1338. Id. at *4 (citing Air Measurement Techs., Inc. v. Akin Gump Strauss Hauer & Feld, LLP, 504 F.3d 1262, 1269 (Fed. Cir. 2007)). Accordingly, the case proceeded in federal court.
In its report from the parties' Rule 26(f) discovery planning conference, WHE informed the court that it planned to file an early motion for summary judgment and requested that the court stay all discovery. In response to this request, the district court stayed discovery, with the exception of requests for admission and written interrogatories, and noted that WHE would file its summary judgment motion within thirty days. In December 2008, WHE filed a targeted motion for summary judgment, arguing that the undisputed prosecution history of the '815 patent demonstrates that the patent examiner would not have allowed the asserted claims without the "planar" limitation. In addition, WHE argued that Byrne was aware of and affirmatively signed statements authorizing the inclusion of the term "planar" in the patent. WHE did not submit any expert testimony in support ofits motion.
Byrne opposed WHE's motion, arguing that the proper inquiry is not whether the particular patent examiner in this case would have allowed the patent without the "planar" limitation, but whether a hypothetical claim without the "planar" limitation could have issued. In support of his opposition, Byrne submitted two affidavits: one from William Kiesel, a patent attorney, and another from Byrne himself. Kiesel's opinion discussed the standard of care for a patent attorney and WHE's alleged negligence, as well as the scope of the prior art Bartholomew patent (U.S. Patent No. 4,091,536), on which the examiner relied in rejecting some of Byrne's original claims. Byrne's affidavit primarily related to the nature of his invention, the scope of the Bartholomew patent, and the novel features of his invention that were independent of the "planar" limitation.
WHE moved to strike portions of both the Kiesel and the Byrne affidavits, arguing that Kiesel was not qualified to provide expert testimony as to the technical aspects of the invention and prior art, and that portions of Byrne's affidavit should be stricken because they contradict the record or are irrelevant. Notably, WHE did not challenge whether Kiesel was qualified to opine on the standard of care for a patent prosecutor, and it did not argue that Byrne was not a person of ordinary skill in the art or otherwise unqualified to offer expert testimony. In response, Byrne argued that the Kiesel and Byrne affidavits complement and rely on each other, such that they "work together as they should, each supporting the other with respect to technical matters and patent matters." Plaintiff's Response to Defendant's Motion to Strike Portions of the Affidavit of William David Kiesel at 2, Byrne v. Wood, Herron & Evans, LLP, Case No. 2:08-cv-102 (E.D. Ky. Mar. 9, 2009), ECF 67. As it relates to his own affivadit, Byrne expressly argued that he was a person of at least ordinary skill in the art and qualified to testify as an expert because he was the inventor of the '815 patent, andbecause he had substantial experience in the design, manufacture and use of string trimmers.
Initially, the district court granted WHE's motion to strike Kiesel's affidavit, sua sponte deciding that Kiesel was "not qualified to provide expert testimony on the issue of legal malpractice in the patent application process." Byrne v....
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