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

December 23, 2010


The opinion of the court was delivered by: William J. Martini, U.S.D.J.:


This matter comes before the Court on Defendant Gibbons P.C.‟s Motion for Summary Judgment seeking dismissal of Plaintiffs‟ Complaint pursuant to Federal Rule of Civil Procedure 56(b). Oral argument was not held. Fed. R. Civ. P. 78. For the reasons stated below, Defendant‟s motion is GRANTED and Plaintiffs‟ Complaint is DISMISSED WITH PREJUDICE.


Plaintiff Herman Minkin ("Minkin") worked as an airplane mechanic for most of his adult life, serving in the United States Navy and as an employee of Pan American Airways, among other aviation companies. (Affidavit of Stephen R. Long, hereinafter "Long Aff.," Ex. A, Deposition of Herman Minkin, 245:31-258:11; 277:13-279:1, May 8, 2009, hereinafter the "Minkin Dep.") In the late 1960s, frustrated by the lack of a suitable tool that would enable him to reach deep inside airplane engines without disassembling external components, Minkin conceived of the idea to create extended reach pliers ("ERPs"). (Id. at 286:14-287:7.) These pliers would have two pivots instead of one and would facilitate accessing bolts or nuts located in deep narrow areas, where conventional pliers could not reach. (Id. at 288:16-289:6.) The working end jaws of the ERP would also open wider than the internal jaws, creating a higher mechanical advantage than conventional pliers. (Id. at 289:15-18). Over the years, Minkin developed a prototype (the "Minkin prototype") and drawing (the "Minkin drawing") of his tool (the "Minkin tool"). (Defendant‟s Brief, hereinafter "Def. Br.," at 5.)

In 1996, Minkin sought to secure a patent for his invention and retained Defendant law firm Gibbons P.C. ("Gibbons") for this purpose. (Long Aff. Ex. D; Plaintiffs‟ Complaint, hereinafter "Cmplt.," ¶¶ 4, 6.) To aid in the process, Minkin provided Gibbons with access to the Minkin prototype and Minkin drawing. (Def. Br. at 7.) Minkin also provided the attorneys with the results of a search for prior art in the field conducted for him by an independent search firm he had hired several years earlier. (Minkin Dep. 336:19-340:16.) The search results revealed prior art consisting of 11 U.S. patents, most of which were for multi-pivoted gripping hand tools dating back to the late 1800s and early 1900s. (Long Aff. Exs. E-O.) According to Defendant, these tools contained many similarities to the Minkin tool and demonstrate crowding in the field of prior art. (Def. Br. at 7.) Minkin asked Gibbons not to supplement or update the prior art search in preparing the patent application because of the expense involved. (Minkin Dep. 339:12-24; Long Aff. Ex. D.)

Gibbons prepared a patent application on Minkin‟s behalf. (Cmplt. ¶ 9.) The application included three independent claims and additional dependent claims. (Long Aff. Ex. T.) The application and accompanying disclosure statement regarding the prior art known to the inventor was filed with the Patent and Trademark Office ("PTO") on June 7, 1996. (Id.) The PTO denied the application on October 22, 1996. (Long Aff. Ex. W.) The examiner rejected two of the claims on the basis that they were anticipated by a prior art reference the examiner had located, a patent issued in 1903 known as the Brindos patent ("Brindos"), that had not come to light during the search commissioned by Minkin. (Id.) The examiner rejected two additional claims on the grounds of obviousness, also related to Brindos. (Id.) Specifically, the examiner stated that even though the Brindos patent did not disclose the claimed relative lengths of the handle members as Minkin‟s application did, "it would have been obvious to one of ordinary skill in the art at the time the invention was made to have placed the pivot point [where Minkin did]. since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art." (Id.) The remaining claims were also rejected based upon Brindos and obviousness. The examiner additionally identified three other examples of prior art that had not been discovered in the search commission by Minkin. (Id.)

Gibbons amended the application and re-filed it with the PTO on December 19, 1996. (Long Aff. Ex. Y.) The amendment focused on the relationship between the handles of the Minkin tool, arguing that that it gave rise to "an increased mechanical advantage" previously unavailable. (Id.) Nevertheless, the amended application was also rejected, this time exclusively on obviousness grounds. (Long. Aff. Ex. Z.) On August 1, 1997, Gibbons filed a continuation in part application, which included a set of declarations specifically directed at the examiner‟s obviousness rejections. (Long Aff. Ex. EE.) Gibbons worked closely with Minkin to prepare the declarations, which in particular addressed the structural ratios set out in the claims and described why they made his invention an improvement which had not been fulfilled by the prior art. (Long Aff. Ex. AA.) On July 14, 1999, the PTO examiner held an office interview during which she examined the Minkin prototype directly. (Plaintiffs‟ Opposition Brief, hereinafter "Pl. Opp.," at 11.) Following the interview, the examiner entered a memorandum on the docket indicating that she had changed her opinion as to the patentability of the Minkin prototype. (Long Aff. Ex. FF.) A patent for the Minkin tool (the ""363 patent") was issued on January 11, 2000. (Cmplt. ¶ 9.)

After the issuance of the patent, Minkin began to manufacture and market his tool. (Minkin Affidavit, hereinafter "Minkin Aff.," ¶ 8.) Plaintiff H&M Aeronaut Tool Co., Inc. ("H&M") was formed and a factory in China began production. (Id.) By 2004, major tool companies including Danaher Tool Company ("Danaher") had become significant customers. (Id.) However, by 2007, Minkin learned that Danaher had created and was marketing its own version of extended reach pliers that was similar but not identical to Minkin‟s invention (the "Danaher tool"). (Id. at ¶ 9; Cmplt. ¶ 13.) It is undisputed that Danaher successfully designed around the constraints of the "363 patent and that the Danaher tool does not infringe the "363 patent. (Minkin Aff. ¶ 9.)

The gravamen of Plaintiffs‟ Complaint is that Defendant committed malpractice by negligently drafting the claims in the "363 patent so narrowly as to offer virtually no protection against competitors. (Cmplt. ¶ 11.) Plaintiffs make additional allegations suggesting that the legal services rendered by Gibbons were substandard. (Pl. Opp. at 5-7.) Specifically, Plaintiffs allege that the Gibbons partner directly responsible for the legal representation had successfully prosecuted less than 10 patents at the time he represented Minkin. (Id.) Plaintiffs also claim that much of the legal work was performed by an associate who had been admitted to practice law for less than 3 1/2 years at the time of the representation and that additional work was outsourced to a contract attorney who did not work for the firm directly. (Id.) Although these facts appear to be offered to demonstrate that Gibbons deviated from the governing standard of care expected of an attorney, without more they are not legally relevant to this motion.

Plaintiffs filed a complaint alleging malpractice against Defendant in state court in April 2008. Defendant subsequently removed the case to federal court, because resolution of the state law malpractice claims will involve a substantial and disputed question of federal patent law. Presently before the Court is Defendant‟s Motion for Summary Judgment, arguing that the Complaint should be dismissed because (1) Plaintiffs‟ malpractice cause of action must fail given that Minkin cannot establish causation, an essential element of a malpractice claim, and (2) Plaintiffs‟ sole expert witness is not qualified to opine on patentability such that his testimony is inadmissible pursuant to Federal Rule of Evidence 702. (Def. Br. at 2-3.)


A. Subject Matter Jurisdiction

Before the Court can adjudicate the merits of Defendant‟s motion, it must satisfy itself that it has subject matter jurisdiction over the action. Andrus v. Charlestone Stone Products Co., 436 U.S. 604, 608 (2002); Mansfield, C. & L.M.R. Co. v. Swan, 111 U.S. 379, 382 (1884). Indeed, if the Court does not conclude that subject matter jurisdiction exists, it must decline to entertain the suit. Bender v. Williamsport Area School District, 475 U.S. 534, 541(1986); Brown v. Francis, 75 F.3d 860, 866 (3d Cir.1996).

Federal district courts have exclusive jurisdiction over patent cases. See 28 U.S.C. § 1338(a) (the "district court shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents... Such jurisdiction shall be exclusive of the courts of the states in patent. cases"). § 1338 jurisdiction extends to any case in which "a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff‟s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims." Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 809 (1988). More specifically, the Christianson test requires determination of whether a "state-law claim necessarily raise[s] a stated federal issue. which a federal forum may entertain without disturbing any congressionally approved balance of federal and state judicial responsibilities." Grable & Sons Metal Prods., Inc. v. Darue Eng'g & Mfg., 545 U.S. 308, 314 (2005). Determination of claim scope has been found to involve a substantial question of federal law that satisfies the federalism concerns of the Grable court. See Immunocept LLC v. Fulbright & Jaworski, 504 F.3d 1281, 1285-86 (2007) (patent claim scope defines the scope of patent protection such that it is certainly a substantial question of federal law; it is a ...

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