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United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT
Argued March 18, 2004 Decided May 21, 2004
No. 03-7037
STAFFAN I. KAEMPE,
APPELLANT
v.
GEORGE C. MYERS, JR., INDIVIDUALLY, ET AL.,
APPELLEES
Appeal from the United States District Court
for the District of Columbia
(No. 01cv02636)
John R. Price argued the cause and filed the briefs for
appellant. Wayne R. Hartke entered an appearance.
James P. Schaller argued the cause for appellees. With
him on the brief was Benjamin R. Jacewicz.
Before: EDWARDS and HENDERSON, Circuit Judges, and
WILLIAMS, Senior Circuit Judge.
Opinion for the Court filed by Circuit Judge EDWARDS.
Bills of costs must be filed within 14 days after entry of judgment.
The court looks with disfavor upon motions to file bills of costs out
of time.
2
EDWARDS, Circuit Judge: This case arises out of attorney
George C. Myers’ representation of Staffan I. Kaempe in the
processing of a patent application for a hydraulic pump.
Kaempe sued Myers and Myers’ current and former law
firms, claiming that Myers converted Kaempe’s interest in
the patent by assigning that interest to a third party without
Kaempe’s consent. Kaempe further claimed that Myers com-
mitted legal malpractice by effecting the assignment in ques-
tion, by failing to correct records at the U.S. Patent and
Trademark Office suggesting that an assignment had been
made and recorded, and by refusing to provide Kaempe with
copies of certain documents related to the patent application.
The District Court dismissed the conversion count of the
complaint for failure to state a claim, finding that an action
for conversion of patent rights is not recognized under Dis-
trict of Columbia law. The court granted summary judgment
to Myers on the malpractice claim on the grounds that
Kaempe failed, inter alia, to provide expert testimony estab-
lishing the applicable standard of care, as required under
D.C. law. Kaempe now appeals the District Court’s judg-
ments on both claims.
First, it is unclear whether D.C. law recognizes an action
for conversion of patent rights, but it is unnecessary to reach
this issue. Even if D.C. law did permit such an action,
dismissal of the conversion claim was proper here, because
the complaint and related documents make clear that
Kaempe’s patent rights were not, in fact, assigned or other-
wise conveyed. Second, Kaempe’s failure to provide expert
testimony in support of his malpractice action is fatal to this
claim. We therefore affirm the judgments of the District
Court.
I. BACKGROUND
A. Legal Context
The U.S. Patent and Trademark Office (‘‘PTO’’) is author-
ized by statute to grant and issue patents to inventors of ‘‘any
new and useful process, machine, manufacture, or composition
3
of matter, or any new and useful improvement thereof.’’ 35
U.S.C. §§ 2, 101 (2000). A patent application must be filed
with the PTO in the name of the inventor or joint inventors of
the subject invention. See 35 U.S.C. §§ 111(a)(1), 116 (2000).
While a patent application is pending, an applicant may file a
continuation-in-part (‘‘CIP’’) application for an invention hav-
ing some subject matter in common with the original applica-
tion and some new subject matter. HERBERT F. SCHWARTZ,
PATENT LAW AND PRACTICE 25-26 (3d ed. 2001). CIP applica-
tions are commonly made when, during the pendency of the
initial ‘‘parent’’ application, the inventor conceives of improve-
ments to the subject of that application. See id. at 25.
A patent gives its owner the right to exclude others from
making, using, offering for sale, selling, or importing the
patented invention. 35 U.S.C. §§ 154(a)(1), 271 (2000). The
default rule is that the inventor or inventors own the patent
rights to the subject matter of the patent. See, e.g., Banks v.
Unisys Corp., 228 F.3d 1357, 1359 (Fed. Cir. 2000). Joint
owners – including those holding title by virtue of joint
inventorship – are each vested with an undivided share of the
patent rights. 5 ERNEST BAINBRIDGE LIPSCOMB III, LIPSCOMB’S
WALKER ON PATENTS § 19.39, at 461-62 (3d ed. 1986). Subject
to certain statutorily defined exceptions, a patent has the
attributes of personal property. See 35 U.S.C. § 261 (2000).
A patent owner or applicant may convey his or her rights in a
patent or patent application, in whole or in part, by means of
an assignment executed in writing. See id. Alternatively, an
owner may exempt others from the patent’s exclusionary
power by granting a license, which is essentially a promise by
the licensor not to sue the licensee for infringement. See U.S.
PATENT AND TRADEMARK OFFICE, MANUAL OF PATENT EXAMINING
PROCEDURE § 301 (8th ed. rev. 2003) (‘‘MPEP’’).
If a patent assignment is not recorded with the PTO, it has
no legal effect against any subsequent purchaser or mortgag-
ee, provided that party gives valuable consideration to acquire
an interest in the patent and has no notice of the prior
assignment. See 35 U.S.C. § 261. Recordation protects an
assignee against parties who later purport to acquire rights in
the assigned interest. See 5 LIPSCOMB, supra, § 19.10, at 356.
4
PTO regulations provide for recordation of assignments, as
well as documents other than assignments that relate to a
patent or patent application but do not transfer or change
title. See 37 C.F.R. § 3.11(a) (2003); MPEP § 313. Howev-
er, recordation is a purely ministerial act and does not reflect
any determination as to the validity of the document filed or
its effect, if any, on the title to a patent or patent application.
37 C.F.R. § 3.54 (2003); MPEP § 317.03.
B. Factual Background
In 1994, Staffan Kaempe invented a hydraulic pump (the
‘‘Cartridge Hydraulic Pump’’ or ‘‘pump’’) the components of
which are held together by the fluid-output pressure generat-
ed by the pump itself, thus eliminating the need for external
bolts or fasteners. Kaempe expected that this technology
would permit significant reduction in the size and weight of
hydraulic pumps and would ultimately replace conventional
pumps altogether. Kaempe revealed his invention to Dennis
Ewald, a longtime co-worker. In September 1997, Kaempe
and Ewald retained attorney George C. Myers to prepare and
process a U.S. patent application for the pump. Kaempe
alleges that he permitted Ewald to be named as a co-inventor
in the patent application in return for Ewald’s agreement to
pay the legal fees incurred in processing the application.
On October 23, 1997, Kaempe and Ewald executed a writ-
ten agreement (the ‘‘October 1997 Agreement’’), providing in
relevant part:
Ewald and Kaempe agree that to cause the further
development, manufacture and distribution of the
Cartridge Hydraulic Pump, they shall form a corpo-
ration (hereinafter ‘‘the Corporation’’) and execute a
non-exclusive license to the Corporation of the pat-
ent for the Cartridge Hydraulic Pump for a term of
the life of the patent.
Def. Mem. Supp. Summ. J., Ex. I (hereinafter ‘‘Def. Ex. I’’),
reprinted in App. 9, 10. In December of that same year,
Kaempe and Ewald formed a corporation under Illinois law –
5
Cartridge Technology Hydraulics, L.L.C. (‘‘CTH’’) – to manu-
facture, sell, and distribute the Cartridge Hydraulic Pump.
Myers filed the patent application for the pump with the
PTO on January 30, 1998. In September of 1998, Kaempe
and Ewald requested that Myers prepare a CIP application
for a new pump, incorporating some claims of the original
pump and some new claims. At some point during the
following year, however, a dispute arose between Kaempe and
Ewald, and in mid-January of 1999, Kaempe’s employment
with CTH was terminated. On January 29, 1999, Ewald –
allegedly without Kaempe’s authorization – forwarded to
Myers a copy of the October 1997 Agreement accompanied by
a letter directing Myers to ‘‘file this assignment with the U.S.
Patent Office and advise me if this is not sufficient.’’ Compl.
¶ 14. The following week, Myers prepared forms for Ewald
and Kaempe to assign the patent application to CTH, but
Kaempe never received or executed any such document.
Around this same time, Kaempe was removed as a manager
of CTH. Id. ¶ 17.
In mid-February 1999, Kaempe retained attorney Bradford
Lyerla, of the law firm of Ryndak & Lyerla, to represent him.
In at least two letters and numerous phone calls and emails
over the course of the following months, Lyerla requested
that Myers provide Kaempe with copies of documents related
to the patent application, including the draft CIP application
for the new pump. Myers ultimately sent part of Kaempe’s
file, but he never sent the draft CIP application. As a result,
Kaempe did not file the CIP application before the filing
deadline, and the claims in the CIP application were not made
part of the patent that ultimately issued. See id. ¶¶ 20-26.
Kaempe alleges that Myers incorrectly told him that he
could not turn over the draft CIP application without Ewald’s
approval. Id. ¶ 25. Myers, in contrast, asserted that he
refused to turn over the CIP application because Kaempe and
Ewald had not paid for his services in preparing the applica-
tion. Myers Dep. of June 18, 2000, at 109, App. 218. The
record indicates that, on April 21, 1999, Myers sent Kaempe’s
new attorneys a bill for services and a letter requesting that
6
Kaempe pay half of the bill, apparently in response to
Kaempe’s request for the draft CIP application. See Letter
from George Myers to James Ryndak, of Ryndak & Lyerla
(April 21, 1999), App. 411. Just two days earlier, Kaempe
petitioned the PTO to revoke Myers’ power of attorney,
asserting that a dispute had arisen between the inventors and
that Myers had refused to provide Kaempe with information
about the application without Ewald’s consent. See Compl.
Ex. L, App. 115.
Meanwhile, at some point in February 1999, Myers had
filed for recordation with the PTO certain documents related
to the patent application. On the required PTO cover sheet
for the filing, Myers designated the ‘‘nature of conveyance’’ to
be recorded as ‘‘other’’ (as opposed to ‘‘assignment,’’ ‘‘security
agreement,’’ ‘‘merger,’’ or ‘‘change of name’’), and identified
the documents to be recorded as ‘‘Agreement and Articles of
Organization.’’ Def. Ex. I, App. 138. In May of 1999, the
PTO sent Myers a ‘‘Notice of Recordation of Assignment
Document.’’ Compl. Ex. N, App. 44. This notice indicated
that the ‘‘agreement and articles of organization [dated
10/23/1997]’’ had been recorded on February 25, 1999, and
identified Kaempe and Ewald as the ‘‘assignors’’ and CTH as
the ‘‘assignee.’’ Id. The notice further indicated that the
documents were recorded at Reel 9784, Frame 0898. Id.
The documents recorded at this location are the PTO cover
sheet, CTH’s Articles of Organization, and the October 1997
Agreement. Def. Ex. I, App. 9-14, 138-41. In a subsequent
letter to Ewald and again in a bill for services, Myers
referred to the documents filed with the PTO as an ‘‘assign-
ment’’ of the patent application. See Letter from George
Myers to Dennis Ewald (June 17, 1999), Compl. Ex. M, App.
117; Invoice for Legal Services Rendered Through February
28, 1999, Compl. Ex. F, App. 107.
In May of 2000, the PTO issued its decision on Kaempe’s
petition to revoke Myers’ power of attorney. See Compl. Ex.
P, App. 120. The PTO denied the petition in part, because it
was not signed by Ewald or his representative. The PTO
agreed, however, that ‘‘in order to assure that all interests
are properly and effectively represented, all further corre-
7
spondence to the Patent and Trademark Office (PTO) must
be signed by’’ both Lyerla and Myers, who remained Ewald’s
attorney of record. Id., App. 121. The decision noted that
‘‘inspection of PTO assignment records reveals that both
named inventors have assigned their entire right ti[t]le and
interest herein to an assignee.’’ Id. On November 28, 2000,
the PTO issued a patent for the pump, listing Kaempe and
Ewald as inventors.
C. Proceedings Below
On December 20, 2001, Kaempe filed suit against Myers
and Myers’ former and current law firms (collectively
‘‘Myers’’) in the District Court. In Count I of the complaint,
Kaempe claimed that Myers had unlawfully converted
Kaempe’s interest in the patent by causing it to be assigned –
without Kaempe’s authorization – to CTH. In Count II,
Kaempe claimed that Myers had committed legal malpractice
by causing the assignment in question, by failing to correct
the PTO’s records suggesting that Kaempe’s interest had
been assigned, and by refusing to provide Kaempe the draft
CIP application upon request.
Myers moved for dismissal of Count I for failure to state a
claim, arguing that under District of Columbia law – which
the parties agreed governed – intangible property such as
Kaempe’s interest in the patent could not be the subject of an
action for conversion. Myers argued in the alternative that
no assignment had occurred. On March 22, 2002, the District
Court dismissed Count I, finding that Kaempe’s patent rights
could not be the subject of an action for conversion under
D.C. law. Kaempe v. Myers, Civ. Action No. 01-2636, slip op.
at 3 (D.D.C. Mar. 22, 2002). On March 5, 2003, the District
Court granted Myers’ motion for summary judgment on
Count II of the complaint on the grounds that Kaempe had
not provided expert testimony on the applicable standard of
care, had not demonstrated that Myers’ actions were the
proximate cause of any injury to Kaempe, and had not proven
damages. Kaempe v. Myers, Civ. Action No. 01-2636, slip op.
at 5-11 (D.D.C. Mar. 5, 2003). Kaempe appealed, challenging
8
both the dismissal of the conversion count and the award of
summary judgment to Myers on the malpractice count.
II. DISCUSSION
A. Conversion Claim
Dismissal for failure to state a claim is appropriate only if
‘‘it appears beyond doubt that the plaintiff can prove no set of
facts in support of his claim which would entitle him to relief.’’
Conley v. Gibson, 355 U.S. 41, 45-46 (1957). We review de
novo the District Court’s dismissal of the conversion count,
accepting the complaint’s factual allegations as true and
giving Kaempe the benefit of all inferences that can reason-
ably be drawn from such allegations. Browning v. Clinton,
292 F.3d 235, 242 (D.C. Cir. 2002). However, we will not
accept ‘‘inferences drawn by plaintiffs if such inferences are
unsupported by the facts set out in the complaint’’ or ‘‘legal
conclusions cast in the form of factual allegations.’’ Id.
(quoting Kowal v. MCI Communications Corp., 16 F.3d 1271,
1275 (D.C. Cir. 1994)). Nor must we accept as true the
complaint’s factual allegations insofar as they contradict ex-
hibits to the complaint or matters subject to judicial notice.
See Veney v. Wyche, 293 F.3d 726, 730 (4th Cir. 2002).
Having reviewed the relevant case law, we conclude that it
remains unclear whether D.C. law would permit an action for
conversion of patent rights. The D.C. courts have never
ruled on whether, or under what circumstances, intangible
property of this nature can be the subject of a suit for
conversion. Some jurisdictions might permit such an action.
See, e.g., Kremen v. Cohen, 337 F.3d 1024, 1030-35 (9th Cir.
2003) (holding that California law permits an action for
conversion of an internet domain name); Dethmers Mfg. Co.,
Inc. v. Automatic Equip. Mfg. Co., 23 F. Supp. 2d 974, 1006-
07 (N.D. Iowa 1998) (collecting relevant cases and holding
that Nebraska law might permit an action for conversion of
an unpatented idea); Curtis Mfg. Co., Inc. v. Plasti-Clip
Corp., 888 F. Supp. 1212, 1233-34 (D.N.H. 1994) (holding that
New Hampshire law permits an action for conversion of novel
ideas embodied in a design); see also Val D. Ricks, Comment,
9
The Conversion of Intangible Property: Bursting the Ancient
Trover Bottle With New Wine, 1991 B.Y.U. L. REV. 1681,
1701-02 n.74 (collecting cases involving actions for conversion
of intangible property). However, Maryland law, to which
the D.C. courts might look for guidance, see Conesco Indus.,
Ltd. v. Conforti & Eisele, Inc., 627 F.2d 312, 315-16 (D.C. Cir.
1980), almost certainly would not: The Maryland Court of
Appeals has held that an action for conversion of intangible
property will lie only where such property is merged in a
transferrable document and the document itself is converted.
Allied Inv. Corp. v. Jasen, 731 A.2d 957, 965 (Md. 1999).
In any event, we need not reach this issue to dispose of the
conversion claim. Even if D.C. law recognized an action for
conversion of patent rights, Kaempe’s complaint nevertheless
fails to state a claim for conversion. It simply cannot be
inferred from the complaint and related documents that
Kaempe’s patent rights were assigned or otherwise conveyed.
Under D.C. law, an action for conversion is recognized only
when a defendant has unlawfully exercised ‘‘ownership, do-
minion or control over the personal property of another in
denial or repudiation of his rights thereto.’’ Shea v. Fridley,
123 A.2d 358, 361 (D.C. 1956). Where there has been no
dispossession of property rights, there can be no action for
conversion. Dismissal therefore was proper.
Kaempe’s complaint asserts that ‘‘Myers performed legal
services which caused [CTH] to acquire ownership in a valu-
able Patent to which it was not entitled.’’ Compl. ¶ 37. This
claim is premised entirely on the statements by the PTO and
by Myers referring to the documents filed for recordation
with the PTO as an ‘‘assignment.’’ The complaint notes that
Myers referred to the documents filed with the PTO as an
‘‘assignment’’ in a letter and a bill. Id. ¶¶ 16, 27. But the
complaint relies primarily on the ‘‘Notice of Recordation of
Assignment Document’’ issued by the PTO in May 1999,
which identifies Kaempe and Ewald as the ‘‘assignors’’ and
CTH as the ‘‘assignee’’ of the pump patent. Id. ¶ 38. The
complaint also cites the patent examiner’s decision disposing
of Kaempe’s petition to revoke Myers’ power of attorney, in
which the examiner stated that PTO records showed that
10
Kaempe and Ewald had assigned their interests in the patent
to a third party. Id. ¶ 39. Based on these statements, the
complaint asserts that ‘‘[i]t would appear from an examination
of the records that the October 23, 1997 letter of intent [i.e.,
the October 1997 Agreement] was filed with the United
States Patent Office by Myers in a successful attempt to
cause the Patent Office to grant an Assignment of the Patent
to CTH.’’ Id. at ¶ 40.
However, nothing in the complaint or the remainder of the
record before us purports to show that any assignment of the
patent was actually made. On the contrary, it is quite clear
that the only documents filed with the PTO were the October
1997 Agreement and the CTH Articles of Organization, and
that neither of these instruments assigns or otherwise con-
veys Kaempe’s patent interests. The complaint in no way
suggests that any ‘‘assignment’’ was filed with the PTO.
Indeed, Kaempe’s counsel conceded at oral argument that
only the October 1997 Agreement and the CTH Articles of
Organization were filed for recordation, see Oral Arg. Tr. at
3:00.0. The record fully confirms this.
The PTO’s ‘‘Notice of Recordation of Assignment Docu-
ment,’’ appended to the complaint, identifies the recorded
documents as ‘‘agreement and articles of organization’’ with a
document date of October 23, 1997. Compl. Ex. N, App. 118.
On the cover sheet for the filing, Myers identified the ‘‘nature
of conveyance’’ as ‘‘other,’’ not as an ‘‘assignment,’’ and he
identified the documents filed as ‘‘agreement and articles of
incorporation’’ with a document date of October 23, 1997. See
Def. Ex. I, App. 138. And the documents recorded at Reel
9784, Frame 0898 – identified in the complaint as the site at
which the PTO recorded the purported ‘‘assignment’’ – in-
clude only the cover sheet, the October 1997 Agreement, and
the CTH Articles of Organization. See id., App. 9-14, 138-41.
The documents recorded by the PTO were not attached to
Kaempe’s complaint. However, the cited documents are pub-
lic records subject to judicial notice on a motion to dismiss.
See EEOC v. St. Francis Xavier Parochial Sch., 117 F.3d 621,
624 (D.C. Cir. 1997); see also 37 C.F.R. § 1.12 (2003) (stating
11
that PTO assignment records are open to public inspection);
Vitek Sys., Inc. v. Abbott Labs., 675 F.2d 190, 192 n.4 (8th Cir.
1982) (holding that the court may take judicial notice of PTO
filings). It is also clear that these documents – which were
appended to Myers’ motion to dismiss and whose authenticity
is not disputed – may be considered here because they are
referred to in the complaint and are integral to Kaempe’s
conversion claim. See, e.g., United States v. Ritchie, 342 F.3d
903, 908 (9th Cir. 2003); Chambers v. Time Warner, Inc., 282
F.3d 147, 152-53 (2d Cir. 2002); In re Burlington Coat
Factory Sec. Litig., 114 F.3d 1410, 1426 (3d Cir. 1997);
Weiner v. Klais & Co., Inc., 108 F.3d 86, 89 (6th Cir. 1997);
Venture Assocs. Corp. v. Zenith Data Sys. Corp., 987 F.2d
429, 431 (7th Cir. 1993).
The October 1997 Agreement and the CTH Articles of
Organization clearly do not assign or otherwise convey
Kaempe’s rights in the patent. The October 1997 Agreement
is, as Kaempe’s complaint indicates, an ‘‘initial letter of under-
standing.’’ Compl. ¶¶ 14, 40. At most, the agreement com-
mits Kaempe and Ewald, at some future time, to form a
corporation and grant to it a non-exclusive license in the
patent. The Articles of Organization obviously do not affect
Kaempe’s patent interests. The statements by the PTO and
Myers referring to the filing as an ‘‘assignment’’ – which
appear to be the sole basis of the conversion claim – have no
legal effect and are therefore irrelevant. Contrary to
Kaempe’s assertion, the PTO’s misstatements do not in any
way effect any conveyance of Kaempe’s interests. The PTO
has no authority to ‘‘grant’’ an assignment: As noted above,
recordation is a ministerial act and reflects no determination
as to the legal validity of the document filed or its effect, if
any, on title to the patent or patent application. See 37
C.F.R. § 3.54; MPEP § 317.03. And Myers’ misidentifica-
tion of the filing in correspondence and bills, though odd,
likewise has no effect on Kaempe’s title. Calling the PTO
filing an ‘‘assignment’’ – which clearly it was not – does not
make it so.
In short, it cannot be inferred from the complaint or the
related documents properly before us that Kaempe’s interest
12
in the patent was assigned or that he was otherwise dispos-
sessed of any portion of that interest. The complaint there-
fore failed to state a claim for conversion.
B. Attorney Malpractice Claim
We review de novo the District Court’s grant of summary
judgment to Myers on the attorney malpractice claim, view-
ing the record in the light most favorable to Kaempe, the
nonmoving party. E.g., Cruz v. Am. Airlines, Inc., 356 F.3d
320, 328 (D.C. Cir. 2004). Summary judgment is appropriate
only if there is no genuine issue of material fact and judgment
in the movant’s favor is proper as a matter of law. FED. R.
CIV. P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
248 (1986). To survive a motion for summary judgment, the
party bearing the burden of proof at trial – in this case,
Kaempe – must provide evidence showing that there is a
triable issue as to each element essential to that party’s claim.
See Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
Kaempe claims that Myers committed malpractice by (1)
assigning his rights in the patent without Kaempe’s consent;
(2) failing to correct the PTO’s misstatements that an assign-
ment had been made and recorded; and (3) failing to provide
Kaempe with a copy of the draft CIP application upon
request. To establish a prima facie case of attorney malprac-
tice under D.C. law, the plaintiff must establish the applicable
standard of care, that the attorney violated the standard, and
that the violation caused a legally cognizable injury. O’Neil
v. Bergan, 452 A.2d 337, 341 (D.C. 1982). In order to meet
the first of these requirements, the plaintiff ‘‘must present
expert testimony establishing the standard of care unless the
attorney’s lack of care and skill is so obvious that the trier of
fact can find negligence as a matter of common knowledge.’’
Id. Kaempe presented no expert testimony on the standard
of care applicable to his claims, but argues that he was not
required to do so because his claims fall within the ‘‘common
knowledge’’ exception. We disagree.
Examples of attorney actions (or failures to act) that fall
within the ‘‘common knowledge’’ exception include: allowing
the statute of limitations to run on a client’s claim, see id. at
13
342; permitting entry of default judgment against the client,
see id.; failing to instruct the client to answer interrogatories,
see id. at 342 n.6; failing to allege affirmative defenses, see
id.; failing to file tax returns, see id.; failing to follow the
client’s explicit instructions, see id.; Hamilton v. Needham,
519 A.2d 172, 175 (D.C. 1986); and billing a client for time not
spent providing services, see Shapiro Lifschitz & Shram, P.C.
v. R.E. Hazard, Jr., 97 F. Supp. 2d 8, 12 (D.D.C. 2000). The
alleged errors cited by Kaempe are not similarly obvious, and
knowledge of the standard of care applicable to Kaempe’s
claims clearly is not within the province of a lay juror.
As to the allegation that Myers committed legal malprac-
tice by assigning Kaempe’s interest in the patent without his
consent, we have already concluded that the factual premise
is unfounded. And we think it is well beyond the ken of the
average juror to know whether an attorney in Myers’ position
had any duty to correct the PTO’s records to the extent that
they erroneously suggested that an assignment had been
recorded, and, if so, what the nature of that duty would be.
As to Myers’ failure to provide copies of the draft CIP
application on request, Myers provided essentially uncontest-
ed evidence that he withheld the application because he had
not been paid for his services in preparing it, and that
Kaempe had notice of this fact. This evidence included
Myers’ deposition testimony, as well as a letter and a bill for
services apparently sent to Kaempe’s new attorneys in re-
sponse to Kaempe’s request for the CIP application. Wheth-
er Myers had any duty to turn over the documents under
these circumstances is not a matter of common knowledge.
In summary, none of Kaempe’s claims falls within the
common knowledge exception, and he therefore was required
to provide expert testimony establishing the applicable stan-
dard of care. In neglecting to do so, he failed to establish a
triable issue as to a key element of his malpractice claim,
making summary judgment for Myers proper.
III. CONCLUSION
For the reasons set forth above, we affirm on alternative
grounds the District Court’s dismissal of the conversion claim
14
and we affirm the award of summary judgment to Myers on
the legal malpractice claim.