Minkin v. Gibbons, P.C.

United States Court of Appeals
for the Federal Circuit
__________________________

HERMAN MINKIN AND
H&M AERONAUT TOOL CO., INC.,
Plaintiffs-Appellants,
v.
GIBBONS, P.C.,
Defendant-Appellee.
__________________________

2011-1178
__________________________

Appeal from the United States District Court for the
District of New Jersey in case No. 08-CV-2451, Judge
William J. Martini.
___________________________

Decided: May 4, 2012
___________________________

PATRICK T. COLLINS, Franzblau Dratch, of Livingston,
New Jersey, argued for plaintiffs-appellants.

STEPHEN R. LONG, Drinker Biddle & Reath, LLP, of
Florham Park, New Jersey, argued for defendant-
appellee. With him on the brief was STACEY A. HYMAN.
__________________________

Before RADER, Chief Judge, O’MALLEY and REYNA, Circuit
Judges.
MINKIN v. GIBBONS PC 2

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 Com-
pany, 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 mean-
ingful 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 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 element was
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
3 MINKIN v. GIBBONS PC

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:

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 multi-
pivoted 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.

1 During the period at issue, Gibbons was
known as Crummy, Del Deo, Dolan, Griffinger & Vec-
chione, P.C.
MINKIN v. GIBBONS PC 4

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 exam-
iner relied primarily on a 1903 reference she uncovered,
U.S. Patent No. 727,279 (“Brindos ’279”), disclosing tie-
handling 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 Appen-
dix (“J.A.”) 851. Plainly stated, the Amendment required
a minimum 3:1 ratio between the lengths of the compo-
nents connecting the two pivots of the ERP. The Amend-
ment, Minkin argued, provided for an increased
mechanical advantage previously unavailable. Minkin,
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 rejec-
tion, 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
5 MINKIN v. GIBBONS PC

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 declara-
tion directed to the examiner’s earlier obviousness rejec-
tions.
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:

2 Claim 1 of the ’363 patent reads in its en-
tirety:

1. A tool, comprising:
two handle elements, wherein
each handle element has a first end
and a second end;
a first pivot joining each handle
element together between said first
end and said second end, wherein the
distance between said first end and
said first pivot is more than twice as
long as the distance between said
second end and said first pivot;
MINKIN v. GIBBONS PC 6

two jaw elements, wherein each
jaw element has a working head end
and an opposite tail end and wherein
the tail end of said two jaw elements
is pivotably connected to the second
end of said two handle elements, re-
spectively;
a second pivot joining each jaw
element together between said work-
ing head end and said tail end,
wherein the distance between said
working head end and said second
pivot is at least twice as long as the
distance between said tail end and
said second pivot; and
wherein the distance between
the second end and said first pivot on
each handle element is at least ap-
proximately three times longer than
the distance between said tail end
and said second pivot on each jaw
element.
Col.7, ll.27-49.
7 MINKIN v. GIBBONS PC

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 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 *7. Minkin
MINKIN v. GIBBONS PC 8

alleged that Gibbons committed malpractice by negli-
gently drafting the claims in the ’363 patent so narrowly
as to offer virtually no protection against competitors,
resulting in lost-sale damages. Id. 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 *12-13 (citing Davis v. Brouse McDow-
ell, 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 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 report offered 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 inter-
mediate 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 in-
termediate point;
9 MINKIN v. GIBBONS PC

wherein each connecting end is pivo-
tably connected to a second connecting
end; and
the distance between the handle in-
termediate point and the connecting end is
greater than the distance between the sec-
ond connecting end and the jaw interme-
diate 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 connect-
ing end and said handle end;
a second pair of parallel arms having
a straight clasping end and a second con-
necting end, said second set of parallel
arms able to swing about a second offset
hinge, said second offset hinge located be-
tween said straight clasping end and said
second connecting end;
each said second connecting end be-
ing 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
capable of causing a mutual motion of said
second pair of parallel arms about said
second offset hinge.
MINKIN v. GIBBONS PC 10

J.A. 164. Both of Gearhart’s alternate claims notably
eliminated the 3:1 ratio limitation added by Gibbons
through the Amendment. The initial Gearhart expert
report mentioned no prior art except for Brindos ’279, and
indicated nothing about the impact of the prior art on the
patentability of the alternate claims other than to state
that they “would have avoided the cited prior art.” Id.;
Minkin, 2010 U.S. Dist. LEXIS 135847, at *16.
On December 6, 2009, a 37-page supplemental
Gearhart expert report was served. The supplemental
report compares the alternate claims to prior art in the
context of anticipation, but there was no discussion of
nonobviousness. Id. at *16-17, *20-21. In deposition,
Gearhart testified that his analysis of the prior art in the
expert reports was limited to patentability under 35
U.S.C. § 102 and that he had not, for various reasons,
addressed whether his alternate claims would have been
allowed under 35 U.S.C. § 103. Id.
Gibbons moved for summary judgment pursuant to
Federal Rule of Civil Procedure 56. In granting the
summary judgment motion, the district court found that
Gearhart utterly fails to provide any sort
of analysis with respect to the alleged non-
obviousness of his claims and gives no
opinions or explanation showing why his
claims would not be deemed obvious. He
makes no attempts to set forth the content
of the prior art, to describe how the sam-
ple claims differ from the prior art, nor
even to identify the level of ordinary skill
in the field. Indeed, he makes nothing
more than a bald assertion that his sam-
ples “would have avoided the prior art”
without explaining what he means by this,
11 MINKIN v. GIBBONS PC

how he arrived at such a conclusion, or
how it relates to obviousness. As such,
this statement is merely an inadmissible
net opinion that fails to shed any light on
the question of obviousness.

Minkin, 2010 U.S. Dist. LEXIS 135847, at *16. The
district court also noted concessions by Gearhart himself,
including that he “had no particular opinions on the topic
of nonobviousness,” and that a nonobviousness analysis
“would have taken too long, and would have been too
difficult for his colleagues to read.” Id. at *17. “Indeed,”
found the court, “Gearhart admits that it would be ‘very
speculative’ to say the PTO would have issued his sample
claims.” Id. at *16.
The district court concluded that Minkin’s expert did
not “provide any sort of evidence demonstrating that his
sample alternative claims are non-obvious. As such, he
has failed to provide the necessary proof that a patentable
alternative to the ’363 patent exists.” Id. at *21. Accord-
ingly, the district court held that Minkin did not carry its
causation burden, an essential element of a New Jersey
malpractice claim, and entered judgment as a matter of
law. Id. Minkin timely appealed.
II. Discussion
A. Jurisdiction
Analyzing jurisdiction, the district court found “that a
substantial question of federal law exists and that resolu-
tion of this question by the federal courts will not disrupt
the balance of power between state and federal govern-
ment.” Id. at *10. Neither party contends that jurisdic-
tion is lacking. Notwithstanding, we have an obligation
to satisfy ourselves that there is jurisdiction on appeal.
Mansfield, Coldwater & Lake Mich. Ry. Co. v. Swan, 111
MINKIN v. GIBBONS PC 12

U.S. 379, 382 (1884); Immunocept, LLC v. Fulbright &
Jaworski, LLP, 504 F.3d 1281, 1284 (Fed. Cir. 2007).
State law patent attorney malpractice cases inher-
ently pose complex jurisdictional issues. 3 They require
our careful consideration, for example, to ensure the
existence of a substantial question of federal patent law.
Nevertheless, this court’s binding precedent recognizes
our jurisdiction in patent attorney malpractice cases such
as this one, in which the plaintiff is required to establish
that, but for attorney negligence, he would have obtained
valid claims of sufficient scope that competitors could not
easily avoid. See id.; see also Air Measurement Techs, Inc.
v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d
1262, 1266 (Fed. Cir. 2007). In Immunocept, for example,
this court held that jurisdiction is proper where allegedly
negligent patent drafting allowed competitors to avoid
narrow claim scope by a simple work around. 504 F.3d at
1284-85. And in Davis, this court held that jurisdiction is
proper if in order to succeed the plaintiff must establish
that it would have received a patent but for attorney
negligence during prosecution. 596 F.3d at 1361; see also
Warrior Sports, Inc. v. Dickinson Wright, P.L.L.C., 631
F.3d 1367, 1371-72 (Fed. Cir. 2011). We conclude that our
exercise of jurisdiction in this case is proper under
28 U.S.C. § 1338(a).
B. “Suit-Within-a-Suit” Analysis
The crux of Minkin’s allegations is that Gibbons neg-
ligently drafted patent claims overly narrow in scope,
3 See Concurring Opinion at 1-2 (O’Malley, J., con-
curring); see also Byrne v. Wood, Herron & Evans, LLP,
No. 2011-1012, --- F.3d ---, 2012 U.S. App. LEXIS 6021
(Fed. Cir. Mar. 22, 2012) (O’Malley, J., dissenting from
denial of petition for rehearing en banc), and USPPS, Ltd.
v. Avery Dennison Corp., No. 2011-1525, ---F.3d---, (Fed.
Cir. Apr. 17, 2012) (O’Malley, J., concurring).
13 MINKIN v. GIBBONS PC

constituting legal malpractice. Because state law creates
Minkin’s cause of action for legal malpractice, this court
must apply the law of New Jersey to decide whether
Gibbons is liable. See, e.g., Warrior Sports, 631 F.3d at
1371-72 (applying Michigan law); Davis, 596 F.3d at
1359-60 (Ohio law); Air Measurement, 504 F.3d at 1268-
69 (Texas law). To establish legal malpractice in New
Jersey, a variation on the tort of negligence, a plaintiff
must demonstrate in its case-in-chief: (1) the existence of
an attorney-client relationship imposing a duty of care
upon the attorney; (2) breach of that duty, defined as
deviation from the standard of care; (3) proximate causa-
tion; and (4) damages. See Garcia v. Kozlov, Seaton,
Romanini & Brooks, P.C., 179 N.J. 343, 357 (2004); Conk-
lin v. Hannock Weisman, 145 N.J. 395, 416 (1996). This
case hinges on the third prong, that is, whether Gibbons’s
actions proximately caused the loss to Minkin.
New Jersey law provides several ways of establishing
proximate causation in malpractice cases, including a
“suit-within-a-suit.” Garcia, 179 N.J. at 358. The suit-
within-a-suit approach applies where recovery depends on
success in the underlying matter and “aims to clarify
what would have taken place but for the attorney’s mal-
practice.” Id.; see also Conklin, 145 N.J. at 417 (“Cause in
fact is sometimes referred to as ‘but for’ causation. . . . The
simplest understanding of cause in fact in attorney mal-
practice cases arises from the case-within-a-case con-
cept.”). New Jersey trial courts commonly employ this
approach where the parties agree to that process. Garcia,
179 N.J. at 358-61.
There can be no causation demonstrated under the
suit-within-a-suit rubric for patent prosecution malprac-
tice where any claim drawn to the alleged invention
would have lacked patentability ab initio. Davis, 596
F.3d at 1363-64. Thus, a required element of the causa-
MINKIN v. GIBBONS PC 14

tion proof is for the plaintiff to demonstrate that the
invention would have been patentable. See id. at 1360-64.
Malpractice suits in a patent prosecution context most
frequently arise where attorney negligence results in a
final PTO rejection. Here, Minkin complains not that a
patent did not issue, but that the allowed claims were
drafted too narrowly to protect the ERP against competi-
tors, namely Danaher. Because the parties agree that the
“suit-within-a-suit” analysis applies, Minkin must prove
by preponderant evidence that alternate claim language
would have been deemed patentable by the PTO and that
it would have read on the Danaher tool. Cf. id. (requiring
plaintiff to prove by a preponderance of evidence that the
PTO would have issued a patent on the invention but for
attorney negligence in preparing and filing the applica-
tion); Warrior Sports, 631 F.3d at 1372 (requiring plaintiff
to prove proximate causation by showing that it would
have prevailed in an infringement suit against the com-
petitor); Garcia, 179 N.J. at 357-58 (requiring plaintiff in
a suit-within-a-suit format to prove by a preponderance of
evidence that he would have recovered a judgment in an
action against the main defendant); see also Byrne v.
Wood, Herron & Evans, LLP, 450 F. App’x 956, 962 (Fed.
Cir. Nov. 18, 2011) (“In the context of a malpractice suit
in which a plaintiff alleges that, but for the attorney’s
negligence, he would have obtained broader patent
claims, a plaintiff must show that broader patent claims
‘would have been held patentable on examination in the
[PTO] . . ., in accordance with the criteria of patentability
applied during examination.’”) (quoting Davis, 596 F.3d at
1364).
1. The Patentability of Minkin’s Alternate Claims
In granting summary judgment, the district court
held that Minkin failed to raise a genuine dispute of
material fact regarding patentability. Specifically,
15 MINKIN v. GIBBONS PC

Minkin provided no evidence showing that Gearhart’s
alternative claim language would have overcome an
obviousness rejection at the PTO. See Minkin, 2010 U.S.
Dist. LEXIS 135847 at *17 (“In short, Gearhart has
entirely failed to provide any evidence demonstrating that
his sample claims are not obvious.”).
This court reviews a district court’s grant of summary
judgment under the law of the regional circuit. Lexion
Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1358
(Fed. Cir. 2011). The Third Circuit “review[s] an order
granting summary judgment de novo, applying the same
standard used by the District Court.” Azur v. Chase
Bank, USA, 601 F.3d 212, 216 (3d Cir. 2010) (quoting
Nicini v. Morra, 212 F.3d 798, 805 (3d Cir. 2000) (en
banc)). Summary judgment is granted “if the movant
shows that there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(a). Under Federal Rule of Civil
Procedure 56, the burden of showing that no genuine
dispute of material fact exists rests initially on the mov-
ing party. See Celotex Corp. v. Catrett, 477 U.S. 317, 323
(1986). The movant may discharge this burden by expos-
ing “the absence of evidence to support the nonmoving
party’s case.” Id. at 325. The burden then shifts to the
nonmoving party to set forth specific facts showing that
there is a genuine dispute for trial. Azur, 601 F.3d at 216.
Where a nonmoving party fails to make a showing suffi-
cient to establish an element essential of that party’s case,
and on which that party will bear the burden of proof at
trial, summary judgment is required under the plain
language of Rule 56. See Celotex Corp., 477 U.S. at 322-
23.
On appeal, Minkin argues that (a) it did not have the
burden of showing the nonobviousness of the alternate
claims at the summary judgment stage of the proceeding,
MINKIN v. GIBBONS PC 16

(b) even if it did have the burden at the summary judg-
ment stage, the nonobviousness of the alternate claims
was shown in the 37-page Gearhart supplemental report,
and (c) the trial court should have inferred the nonobvi-
ousness of Gearhart’s alternative claim language because
the ’363 patent issued after an in-person interview. None
of these arguments has merit.
a. Minkin Had the Burden of Showing Nonobviousness
Minkin contends, based on this court’s opinion in
Davis, 596 F.3d at 1363-64, that it did not have the bur-
den on summary judgment of establishing that its alter-
native claims were nonobvious, beyond simply
distinguishing prior art. In Davis, summary judgment
was granted in favor of the defendant because the ag-
grieved applicant’s expert had provided only naked con-
clusions regarding the patentability of the invention. Id.
This court affirmed the result, but added:
[W]e reject the suggestion that Ms. Davis
would have had to identify claims for her
inventions or perform a patentability
analysis similar to that required in an in-
validity trial. Ms. Davis’s ultimate burden
in this case is to establish the likelihood
that her inventions would have been held
patentable on examination in the
PTO . . . . At the summary judgment
stage, she had only to introduce evidence
sufficient to establish an issue of material
fact as to patentability. Ms. Davis could
have satisfied this initial burden in any
number of ways. . . . Mr. O’Shaughnessy
[plaintiff’s expert] could have reviewed the
prior art references cited in the office ac-
17 MINKIN v. GIBBONS PC

tions and discussed their effect on pat-
entability.
Id. at 1364. Minkin argues that this language in Davis
announced a more deferential standard in malpractice
cases than is required in ordinary infringement suits, and
that the district court erred in requiring any discussion of
nonobviousness at the summary judgment stage.
Minkin misreads Davis. The statement above does
not establish a more deferential standard for malpractice
cases specifically; rather, it is a routine observation about
evidentiary showings required under Rule 56 generally.
Compare id. with Celotex Corp., 477 U.S. at 324 (“We do
not mean that the nonmoving party must produce evi-
dence in a form that would be admissible at trial in order
to avoid summary judgment. . . . Rule 56(e) permits a
proper summary judgment motion to be opposed by any of
the kinds of evidentiary materials listed in Rule
56(c) . . . .”). Thus, while a full “patentability analysis
similar to that required in an invalidity trial” is not
necessary, Davis, 596 F.3d at 1364, summary judgment is
nonetheless “‘proper where the pleadings, depositions,
answers to interrogatories, admissions, and affidavits
show there is no genuine issue of material fact,’” Azur,
601 F3d at 216 (quoting Nicini, 212 F.3d at 805). We find
that under the regular evidentiary burdens of Rule 56,
Minkin had “to introduce evidence sufficient to establish
an issue of material fact as to patentability.” Davis, 596
F.3d at 1364.
Patentability necessarily includes the condition that
an invention consist of nonobvious subject matter. 35
U.S.C. § 103; Graham v. John Deere Co., 383 U.S. 1, 14
(1966). Minkin’s ERP claims, unlike Davis, had already
drawn numerous obviousness rejections from across a
very crowded art field. See Minkin, 2010 U.S. Dist.
MINKIN v. GIBBONS PC 18

LEXIS 135847, at *18. In its motion for summary judg-
ment, Gibbons identified § 103(a) issues with respect to
the alternate claims, submitting expert opinion question-
ing Minkin’s ability to obtain even broader scope in light
of the record. Because it was Minkin’s ultimate burden at
trial to establish nonobviousness, it bore the burden on
summary judgment of demonstrating a disputed material
fact regarding this essential element of its case, especially
given that Gibbons put § 103(a) directly at issue. Univ. of
W. Va., Bd. of Trs. v. Van Voorhies, 278 F.3d 1288, 1295
(Fed. Cir. 2002) (“Summary judgment must be granted
against a party who has not introduced evidence sufficient
to establish the existence of an essential element of that
party’s case, on which the party would bear the burden of
proof at trial.”).
Minkin defends that it would have been too cumber-
some in the first instance to “prove a negative” by ad-
dressing every potential combination of prior art that
could be used in an obviousness rejection. 4 Minkin sug-
gests that merely distinguishing each prior art reference
individually was sufficient to defeat summary judgment,
reflecting actual practice before the PTO where applicants
often await an examiner’s specific § 103(a) rejections
before discussing nonobviousness.
We recognize that applicants do not typically prove
“validity” against all prior art, and only show that claims
are not invalid over references cited against them. But
the order of typical prosecution practice is irrelevant to
the procedural posture here. Malpractice cases under a
suit-within-a-suit framework require as part of the plain-

4 The district court did not require that Minkin
prove the patentability of its alternative claims to the
level of a “guarantee,” Minkin Br. at 15-17, 26, 30, and
never suggested that anything more than preponderant
evidence would be necessary to prevail.
19 MINKIN v. GIBBONS PC

tiff’s case-in-chief a demonstration of the likelihood of
patentability. See Davis, 596 F. 3d at 1363-64. In the
context of summary judgment, we hold that the district
court was obligated to determine whether Minkin could
satisfy its ultimate burden of showing patentability in
light of Gibbons’s motion. Rule 56 is designed to assess
sooner rather than later the parties’ proof in order to see
whether there is a genuine need for trial. See Fed. R. Civ.
P. 56, Notes of Advisory Committee of Rules, 1963
Amendment, Subdivision (e). Minkin’s improper reliance
on dicta from Davis to save it from summary dismissal is
incompatible with a basic purpose of Rule 56. Id.; see also
Celotex Corp., 477 U.S. at 323-24 (“One of the principal
purposes of the summary judgment rule is to isolate and
dispose of factually unsupported claims or defenses, and
we think it should be interpreted in a way that allows it
to accomplish this purpose.”).
Rule 56 requires a party opposing summary judgment
to present specific facts demonstrating that there exists a
genuine dispute of material fact to be resolved by a fact-
finder. Id. at 324; see also Azur, 601 F3d at 216. If
Minkin had factual disputes concerning nonobviousness it
was obligated to raise them in response to the properly
supported motion for summary judgment expressly rely-
ing on § 103(a). See id. at 323. Minkin, however, failed to
raise a single material fact in dispute as to the nonobvi-
ousness of the proposed alternate claims.
b. The Supplemental Report Was Not Sufficient
Minkin argues that even if it did have the burden as
to nonobviousness, it met that burden by thoroughly
analyzing sixteen prior art references and their relation-
ship to the alternate claims. While admitting that there
is no express discussion of § 103(a) in any report, Minkin
MINKIN v. GIBBONS PC 20

argues that the district court ignored the nonobviousness
implications of Gearhart’s 37-page supplemental report.
The district court did consider and address Gearhart’s
37-page supplemental expert report in detail. See
Minkin, 2010 U.S. Dist. LEXIS 135847, at *20-21. It
found that Minkin did not carry its burden with respect to
patentability in the supplemental expert report, which did
“not touch on obviousness whatsoever.” Id. at *20. Ac-
cording to the district court, while Gearhart’s supplemen-
tal expert report “does provide certain opinions on the
patentability of his alternate claims,” it was nonetheless
“clear beyond all doubt that the opinions contained
therein are strictly limited to novelty/anticipation con-
cerns.” Id. The district court concluded that “Gearhart
has failed to provide any sort of evidence demonstrating
that his sample alternative claims are non-obvious.” Id.
at *21.
We agree. Gearhart’s supplemental expert report
only states his view that the alternate claims would have
overcome a § 102 challenge. We have held, however, that
anticipation and obviousness are separate conditions of
patentability, requiring different tests and different
elements of proof. Cohesive Techs, Inc. v. Waters Corp.,
543 F.3d 1351, 1364 (Fed. Cir. 2008); Duro-Last, Inc. v.
Custom Seal Inc., 321 F.3d 1098, 1107-08 (Fed. Cir. 2003);
see generally KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
406-07 (2007). Minkin’s attempt to recast its anticipation
analysis as sufficient for nonobviousness purposes is
unavailing. Gearhart testified that his expert analysis of
the prior art was limited to potential rejections under
§ 102; he further conceded that he did not undertake any
analysis of § 103(a) and admitted that “it would be ‘very
speculative’ to say that the PTO would have issued his
sample claims.” Minkin, 2010 U.S. Dist. LEXIS 135847,
at *16-17 (internal citations omitted). Indeed, Gearhart’s
21 MINKIN v. GIBBONS PC

expert reports failed even to discuss the nonobviousness
of his sample claims over the prior art cited in § 103
rejections during the prosecution history of the ’363
patent, including not only Brindos ’279, but Greishaber,
Zlotnicki, and Neff.
We find that the 37-page Gearhart report contains
nothing to assist the trier of fact with respect to the
unique tests and proofs of § 103(a), and provides no
insight into the question of whether the alternate claims
would ultimately have been allowed by the PTO. The
movant may prevail under Rule 56 by exposing “the
absence of evidence to support the nonmoving party’s
case.” Celotex Corp., 477 U.S. at 325. The trial court did
not err in finding that Minkin failed to provide evidence
demonstrating that its alternate claims are nonobvious. 5
c. No Inference of Patentability from the ’363 Patent
Minkin argues that since that the examiner ulti-
mately granted the ’363 patent after an office interview,
the court should infer from that favorable history that
Gearhart’s alternate claim language would also be
deemed nonobvious. The district court refused to recog-
nize that a “presumption of non-obviousness attaches” in

5 Minkin was also required to demonstrate that
its proposed alternative claim language would have read
on the Danaher tool. Minkin, 2010 U.S. Dist. LEXIS
135847, at *13. The district court did not rely on this
ground in dismissing the case, but noted that while
Gearhart suggested that his sample claims would have
protected Minkin against the Danaher tool, “he provides
no opinions or rationale in support of this proposition.”
Id. at *16. It is well-established that unsupported expert
opinions do not create a genuine issue of material fact.
Davis, 596 F.3d at 1364; see Novartis Corp. v. Ben Venue
Labs, Inc., 271 F.3d 1043, 1051 (Fed. Cir. 2001) (applying
Third Circuit law).
MINKIN v. GIBBONS PC 22

this context, calling this Minkin argument “weak,” “un-
supported,” and “contrary to common sense.” Minkin,
2010 U.S. Dist. LEXIS 135847, at *17-18. We agree.
The challenge for Gibbons all along, as noted by the
district court, was drafting broadly in the face of such a
crowded art field. Id. at *18. Including a 3:1 pivot ratio
limitation was the final compromise to the claim language
agreed on by the examiner and inventor in an effort to
secure patentability. The language of the issued ’363
patent, however, is entirely distinct from the alternate
claim language drafted by Gearhart, who attempts to
capture more scope for purposes of this litigation. An
inference of nonobviousness does not attach to the alter-
nate claims by virtue of the issued ’363 patent because the
claim terms are different. The fact that the ERP was
ultimately deemed nonobvious after handling a prototype
does not mean that an examiner would necessarily decide
same thing if the claims were broader. We therefore
refuse to conclude that an examiner would have allowed
Gearhart’s alternate claims of greater scope just because
the more narrow ’363 patent issued after an in-person
interview.
III. Conclusion
Providing no evidence of nonobviousness, Minkin
failed to establish a genuine dispute of material fact as to
the patentability of its alternate claims. Because Minkin
did not carry its burden on causation, the district court’s
summary judgment in favor of Gibbons is
AFFIRMED.
COSTS
No costs.
 United States Court of Appeals
for the Federal Circuit
__________________________

HERMAN MINKIN AND
H&M AERONAUT TOOL CO., INC.,
Plaintiffs-Appellants,
v.
GIBBONS, P.C.,
Defendant-Appellee.
__________________________

2011-1178
__________________________

Appeal from the United States District Court for the
District of New Jersey in case No. 08-CV-2451, Judge
William J. Martini.
___________________________

Decided: May 4, 2012
___________________________

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

I concur in all aspects of the thoughtful majority opin-
ion, save one. While I agree we are compelled to exercise
jurisdiction over this matter, I do not agree it is “proper”
that we do so. Majority Op. at 12. As the majority notes
in section II A., there is binding precedent that compels
MINKIN v. GIBBONS PC 2

that we decide the merits of this case. I believe that
precedent is incorrect, however, and inconsistent with
controlling Supreme Court case law.
I explained why I believe this court should discon-
tinue exercising jurisdiction over state law malpractice
claims in Byrne v. Wood, Herron & Evans, LLP, No. 2011-
1012, --- F.3d ---, 2012 U.S. App. LEXIS 6021 (Fed. Cir.
Mar. 22, 2012) (O’Malley, J., dissenting from denial of
petition for rehearing en banc), and USPPS, Ltd. v. Avery
Dennison Corp., No. 2011-1525, ---F.3d---, (Fed. Cir. April
17, 2012) (O’Malley, J., concurring). For those same
reasons, I believe we should consider en banc the propri-
ety of continuing to hear cases such as this one at our first
opportunity.