[ Melanie Gretchen ] The Federal Circuit Court of Appeals in Washington, D.C., recently ruled that Landmark Screens LLC can pursue a legal malpractice suit against Morgan, Lewis & Bockius over a botched patent application.  This is the latest turn in Landmark's 6-year attempt to recover damages from its former patent counsel.  The decision overturns a California federal judge's ruling that dismissed the case on statute-of-limitations grounds. Dispute Dates Back to 2002. Back in 2002, Landmark lawyer Thomas Kohler, then at Pennie & Edmonds, filed a patent application for an outdoor light-emitting diode electronic billboard on Landmark's behalf.  A follow-up application did not have some key information, whereupon the U.S. Patent and Trademark Office rejected the filing as incomplete. Kohler did not follow up with a response to the rejection until after the one-year anniversary of the first application, according to the opinion issued by the U.S. Office.  At that point, all patent claims in the first application became prior art against the subsequent application, and all claims in the second filing were lost.

Requirement: In order to qualify for a patent, an invention must be different from all previously-published materials describing similar inventions, or "prior art." Inventors have a 1-year grace period after their first application to file a subsequent application without losing the novelty of their invention.

"This was a devastating outcome for Landmark.  Nevertheless, neither Kohler nor Morgan Lewis divulged the true nature or seriousness of the problem for another six months," the opinion said. Ruling on First Landmark Lawsuit. The company sued in California state court in 2005, but the court found that the case belonged in federal court.  That same day, Landmark filed its claims again in federal court in San Jose, California.  U.S. District Judge Jeremy Fogel granted summary judgment to Morgan Lewis and Kohler in 2011.  He found that Landmark had been aware of the issues for at least 3 years before it filed the suit in federal court, and had missed the state deadline for bringing fraud claims. Overruled. But a 3-judge panel of the Federal Circuit Court of Appeals in Washington disagreed, ruling that the clock stopped running while the lawsuit was pending in state court.  And the panel also overturned an order by the lower court that had capped  potential damages for the fraud claim. Judge Kathleen O'Malley, in a separate concurring opinion, called on the full Federal Circuit to reconsider whether state law malpractice claims that involve patent law actually belong in federal court.  She accused the Federal Circuit's 2007 decision to claim jurisdiction over patent malpractice claims of wreaking havoc with parties' "well-settled expectations" that such claims belong in state court. The case is: Landmark Screens LLC v. Morgan, Lewis & Bockius et al, U.S. Court of Appeals for the Federal Circuit, No. 11-1297. For further details, go to:  [Reuters, 4/23/12].