Minkin v. Gibbons, P.C., [2011-1178] (May 4, 2012) [REYNA, Rader, O'Malley] The Federal Circuit affirmed summary judgment for a patent law firm because the former client did not show that its hypothetical alternate claim was ptaentable.
DISCUSSION:  Minkin claimed that his patent lawyers committed malpractice in failing to get broad enough claims in U.S. Patent No. 6,012,363.  However, Minkin made no attempt to show that his proposed alternate claim would have been allowed by the U.S. Patent Office.  The district court granted summary judgment, finding that Minkin's expert "utterly fails to provide any sort of analysis with respect to the non-obviousness of his claims and give s no opinions or explanation showing why his claims would not be deemed obvious."  The Federal Circuit agreed, stating that "providing no evidence of nonobviousness failed to establish a genuine dispute of material fact as to the patentability of its alternate claims."