## United States Court of Appeals for the Federal Circuit

2009-1395

HEATHER A. DAVIS, Plaintiff-Appellant,

v. BROUSE MCDOWELL, L.P.A.

and DANIEL A. THOMSON, Defendants-Appellees.

Steven D. Bell , Steven D. Bell Co., L.P.A., of Brecksville, Ohio, argued for plaintiff-appellant. Of counsel on t he brief were Jeffrey R. Sadlowski , Jeffrey R. Sadlowski, LLC, of Brecksville, Ohio, and Himanshu S. Amin , Himanashu S. Amin, LLC, of Cleveland, Ohio. James A. King , Porter, Wright, Morris & ArthurLLP, of Columbus, Ohio, argued for defendants-appellees. With him on the brief was Bryan R. Faller

. Appealed from: United States District C ourt for the Northern District of Ohio Judge Sara Lioi

## United States Court of Appeals for the Federal Circuit

2009-1395

HEATHER A. DAVIS, Plaintiff-Appellant,

v. BROUSE MCDOWELL, L.P.A.

and DANIEL A. THOMSON, Defendants-Appellees. Appeal from the United States District Court for the Northern District of Ohio in case no. 5:08-CV-1356, Judge Sara Lioi.

_________ __________________ DECIDED: March 2, 2010

_________ __________________ Before NEWMAN, BRYSON, and MOORE, Circuit Judges

. MOORE, Circuit Judge

. Heather A. Davis appeals from a decision of the United States District Court for the Northern District of Ohio granting summary judgment in favor of Daniel A. Thomson and Brouse McDowell, L.P.A. (collectively, Defendants). Because the district court correctly determined that Ms. Davis failed to introduce evidence sufficient to establish a genuine issue of material fact as to an essential element of her case, we affirm.
I. BACKGROUND Ms. Davis is a solo inventor who dev eloped the website, search engine, and business known as The IP-Exchange. Ms . Davis describes The IP-Exchange as a social networking platform targeted at “i ntellectual property professionals and non-professionals alike.” In 2003, Ms. Davis co ntacted Mr. Thomson, an attorney who was then employed by the Ohio-b ased law firm Brouse McDowe ll, L.P.A. Ms. Davis requested general information a bout patent protection and told Mr. Thomson that she was particularly interested in obtaining international patent coverage. Mr. Thomson responded by sending Ms. Davis a letter explaining various aspects of the Patent Cooperat ion Treaty (PCT), which prov ides a unified procedure for filing a single patent applicat ion in multiple countries. Mr. Thomson’s letter discussed the advantages of filing patent applications under the PC T and the deadlines and costs associated with PCT applications . The letter did not mention the “absolute novelty” rule that applies in certain countries to bar an inventor from obtaining a patent if she has publicly disclosed her invention prior to filing an application. Ms. Davis went live with her IP-Exchange website in 2005. On January 20, 2006, Ms. Davis filed two pr ovisional patent applications with the United States Patent and Trademark Office (PTO). These provisional applications related to The IP-Exchange webs ite and search engine, respectively. Under 35 U.S.C. § 119(e), Ms. Davis was required to file a U.S. non-provisional (or utility) patent application within one year of filing the corresponding prov isional application if she wanted to retain the January 20, 2006 priority date. Similarly, Ms. Davis had one year from the filing date of the provisional application to f ile any PCT applications. See Paris Convention for the Protection of Industrial Property art. 4(A) , March 20, 1883, 21 U.S.T. 1583. This one-year limit set the filing deadline for Ms . Davis’s utility and PCT applications as Monday, January 22, 2007.

2009-1395 2On Wednesday, January 17, 2007—five days before the filing deadline for the utility and PCT applications—Ms. Davis again contacted Mr. Thomson. She told him about the provisional applications relati ng to The IP-Exchange and the upcoming deadline for filing corresponding utility applic ations, and she asked if he could prepare and file U.S. utility and PCT ap plications on or before the following Monday, January 22. Mr. Thomson agreed to prepare and file the applic ations by the deadline. However, he told Ms. Davis that he was leaving the fo llowing day for vacation and would not return until Monday. He asked Ms. Davis to provide hi m with all necessary files before he left. On Thursday, January 18, Ms. Davis sent Mr. Thomson an email with an attachment containing fourt een pages of single-spaced clai ms that she believed could be used for her inventions. Ms. Davis told Mr. Thomson’s assistant that she had an additional 275 pages of material relating to t he inventions that she wanted to provide to Mr. Thomson. Due to technical difficultie s, however, Ms. Davis was unable to provide Mr. Thomson’s assistant with these ma terials until the day after he left. Mr. Thomson returned from his vacation as scheduled, on Monday, January 22. Defendants concede that no other Brouse McDowell attorney worked on Ms. Davis’s applications during his absence. Mr. T homson copied content from Ms. Davis’s provisional applications to create three corre sponding U.S. utility patent applications and filed the utility applications by the end of the day. Due to the looming deadline, Mr. Thomson planned to get the applications on f ile and “go back and clean [them] up” later. J.A. 1394 (Thomson Dep. 11 9:23-24, July 1, 2008). He did not file any PCT applications on January 22. Ms . Davis alleges that the U. S. applications prepared and

2009-1395 3filed by Mr. Thomson were deficient in va rious respects and that these deficiencies ultimately precluded her from securing patents on her inventions. That evening, Ms. Davis contacted Mr . Thomson via telephone and email to verify the status of the PCT applications. Mr. Thomson responded, in an email sent at 10:47 p.m., that he had not fil ed any PCT applications. He explained that “I do not think it is worth spending the money, since you will not be able to obtain patent protection in Europe.” J.A. 1347. After fu rther discussion with Ms. Davis the next day, Mr. Thomson agreed to prepare the requested PCT applications. He fil ed the PCT applications on January 25, 2007. The relationship between Ms. Davis and Mr. Thomson continued to deteriorate, and in June 2007 Mr. Thomson withdrew his r epresentation of Ms. Davis before the PTO. Ultimately, Ms. Davis’s patent applications went abandoned. Ms. Davis asserts that because her inventions lacked paten t protection her investors withdrew their funding, leaving her unabl e to operate The IP-Exchange as a business. In January 2008, Ms. Davis sued Defendants in the Court of Common Pleas for Summit County, Ohio. The or iginally filed complaint a lleged that Defendants committed malpractice by failing to timely file three PCT applications on Ms. Davis’s inventions. Ms. Davis amended her complaint in May 2008 to allege that Defendants committed malpractice by failing to file the three PCT app lications as well as by “other omissions.” In June 2008, Defendants removed the ac tion to federal court. Defendants explained in their Notice of Re moval that Ms. Davis had test ified at deposition that the “other omissions” recited by the complain t included Mr. Thomson’ s alleged negligence in preparing and filing the U.S. applications. Defendants assert ed that adjudicating Ms.

2009-1395 4Davis’s malpractice claims would necessarily in volve a resolution of the patentability of her inventions. Therefore, according to Defendants, Ms. Davis’s claims raised a substantial question of federal patent law over which the district court had exclusive jurisdiction pursuant to 28 U.S.C. § 1338(a). The parties engaged in discovery, exchange d expert reports, and deposed each others’ experts. Defendants then filed a motion for summary judgment seeking dismissal of Ms. Davis’s cl aims, and Ms. Davis filed a motion for partial summary judgment on Defendants’ affirmative defenses . The court granted Defendants’ motion in its entirety, dismissed Ms. Davis’s motion as moot, and entered judgment in favor of Defendants. Ms. Davis appeals.
II. DISCUSSION
A. We must first determine whether we have ju risdiction over this appeal. Pursuant to 28 U.S.C. § 1295(a)(1), we have exclusiv e jurisdiction over an appeal from a final district court decision if the court’s jurisd iction was based at least in part on 28 U.S.C. § 1338. Section 1338(a) provides that federal district courts have exclusive jurisdiction over actions “arising under any Act of Congress relating to patents.” Here, the district court determined that it had jurisdiction over Ms. Davis’s malpractice claim pursuant to 28 U.S.C. § 1338(a). We review the cour t’s jurisdictional determination without deference. Air Measurement Techs., Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P. , 504 F.3d 1262, 1267 (Fed. Cir. 2007). The Supreme Court set forth the test for determining whether a district court has jurisdiction pursuant to 28 U.S.C. § 1338(a) in Christianson v. Colt Indus. Operating Corp. , 486 U.S. 800 (1988): jurisdiction extends to those cases “in which a well-pleaded

2009-1395 5complaint establishes either t hat federal patent la w creates the cause of action or that the plaintiff’s right to relief necessarily dep ends on resolution of a substantial question of federal patent law, in that pat ent law is a necessary element of one of the well-pleaded claims.” Id. at 808-09. If the well-pleaded comp laint presents multiple theories supporting a claim, that claim “may not form the basis for § 1338(a) jurisdiction unless patent law is essential to each of those theories.” Id. at 810. Ms. Davis’s cause of action for legal malpractice arises under Ohio state law. Therefore, we must determine whether patent law is a “nec essary element” of a claim presented in her complaint. Id. at 809. To establish a cause of action for legal malpractice based on negligent r epresentation in Ohio, a plai ntiff must show: “(1) that the attorney owed a duty or obligation to the pl aintiff, (2) that there was a breach of that duty or obligation and that the attorney fa iled to conform to the standard required by law, and (3) that ther e is a causal connection betw een the conduct complained of and the resulting damage or loss.” Vahila v. Hall , 674 N.E.2d 1164, 1169 (Ohio 1997). Ms. Davis’s complaint alleges that she had an a ttorney-client relationship with Defendants and that Defendants breached t heir duty to her by failing to timely file the PCT applications and by “other omissi ons.” Ms. Davis testified at deposition that these “other omissions” related largely to Mr. Thomson’s alleged negligence in preparing and filing the U.S. applications. Defendants argue that the reso lution of Ms. Davis’s allegations relating to the U.S. patent applications will nece ssarily involve substantive issues of U.S. patent law and assert that § 1338(a) jurisd iction exists on this basis. Ms. Davis responds that her allegations relating to the U.S. applications comprise an al ternative theory supporting a

2009-1395 6single claim for legal malpractice. It is undi sputed that Ms. Davis’s allegations relating to the PCT applications do not rais e any issue of U.S. patent law. Therefore, if Ms. Davis’s complaint merely presents alternative theories, the district court did not have jurisdiction over this case. See Christianson , 486 U.S. at 810 (“a claim supported by alternative theories in the complaint may not form the basis for § 1338(a) jurisdiction unless patent law is essential to each of those theories”). We agree with Defendants that Ms. Davis’s complaint presents multiple claims for legal malpractice. A “claim” is broadl y defined as the “aggregate of operative facts giving rise to a right enforceable by a court.” Black’s Law Dictionary 264 (8th ed. 2004). Ms. Davis’s allegations of atto rney malpractice arise out of different sets of operative facts. On the one hand, she alleges that Mr. Thomson committed malpractice simply by failing to file the PCT applications on or before January 22, 2009. Additionally, however, she alleges that Mr. Thomson co mmitted malpractice by performing various acts of negligence in connection with t he preparation and f iling of the U.S. applications—for example, s he asserts that Mr. Thoms on drafted inadequate claims; failed to include information sufficient to comply with the requirements of 35 U.S.C. § 112, ¶ 1; and failed to apply any of hi s own legal expertise to synthesize the descriptive materials she provi ded into a cohesive specificati on. Therefore, Ms. Davis’s complaint presents at least two distinct claims: one relating to Mr. Thomson’s preparation and filing of the U.S. applications and one relating to his failure to timely file the PCT applications. Defendants argue that patent law is a necessary element of Ms. Davis’s malpractice claim relating to the U.S. applic ations. Specifically, Defendants assert—

2009-1395 7and the district court agreed—that Ms. Davis’ s claim should be subject to Ohio’s “casewithin-a-case” doctrine. This doctrine applies in certain malp ractice cases to require the plaintiff to prove that s he would have been successful in the underlying matter but for the alleged malpractice. See Vahila , 674 N.E.2d at 1168-69. If the case-within-a-case doctrine applies to Ms. Davis’s claim, she c an prevail only by prov ing that U.S. patents would have issued on her applications but fo r Defendants’ malpractice—i.e., that her inventions were patent able under U.S. law. Ms. Davis relies on the Ohio Supreme Court’s decision in Vahila to argue that her claim is not subject to the case -within-a-case doctrine. In Vahila , the Ohio Supreme Court rejected the argument that the caus ation element of t he legal malpractice standard should be replaced by a categorica l application of the case-within-a-case doctrine. Id. at 1168-69. The court re cognized that the burden this doctrine imposes on malpractice plaintiffs is substantial and oft en unjust, particularly wher e the plaintiffs, like the appellants in Vahila , “arguably sustained damage or loss regardless of the fact that they may be unable to prove that they would have been successful in the underlying matter(s) in question.” Id. at 1169. Thus, the court stat ed that it could not endorse “a blanket proposition that require s a plaintiff to prove, in ev ery instance, that he or she would have been successful in the underlying matter.” Id. at 1170. The court emphasized, however, that the case-within- a-case doctrine rema ined viable: “the requirement of causation often dictates that the merits of the ma lpractice action depend upon the merits of the underlying case. Naturally , a plaintiff in a legal malpractice action may be required, depending on the situation, to provide some evidence of the merits of the underlying claim.” Id. at 1170-71.

2009-1395 8The court confirmed the continuing app licability of the ca se-within-a-case doctrine in Environmental Network Corp. v. Goodman Weiss Miller, L.L.P. , 893 N.E.2d 173 (Ohio 2008), holding that the doctrine applies to legal ma lpractice cases in which the plaintiff’s recovery depends upon it s success in the underlying action. Id. at 175. In Environmental Network , the appellees alleged that their attorneys had coerced them into settling the case. As their sole claim for recovery, the appellees argued that they would have obtained a better result if t he case had been tried to conclusion. Id. at 177. The court observed that “ unlike the plaintiffs in Vahila , who sustained losses regardless of whether their underlying case was merito rious,” the appellees could prove causation and damages only if they est ablished that “they would have succeeded in the underlying case and that the judgment would have been better than the terms of the settlement.” Id. Therefore, “the theory of [t he] malpractice case place[d] the merits of the underlying litigation directly at issue,” and the case-wit hin-a-case doctrine appl ied; appellees “had the burden of proving by a preponderance of the evidence that but for appellant’s conduct, they would have received a more fa vorable outcome in the underlying matter.” Id. at 177-78. Ms. Davis’s malpractice claim relating to th e U.S. applications is analogous to the claim at issue in Environmental Network . Ms. Davis alleges t hat Mr. Thomson breached his duty to her by negligently preparing and filing the U.S. applications. She further alleges that Mr. Thomson’s ne gligence ultimately cost her the opportunity to secure patents on her inventions and that her in vestors withdrew their financial commitments as a result of her failure to secure pat ent protection. Unle ss Ms. Davis would have received patents on her invent ions if the applications had been competently drafted—

2009-1395 9i.e., unless her inventions were patent able—Mr. Thomson’s negligence could not have caused her to suffer any damages. As in Environmental Network , therefore, Ms. Davis’s theory of recovery “places the meri ts of the underlying [p atent prosecution] directly at issue.” Id. The district court correctly dete rmined that the ca se-within-a-case doctrine applies to Ms. Davis’s legal malpractice claim. Because the case-within-a-case doctrine applies, Ms. Davis must prove, by a preponderance of the evidence, that she would have obtained patents on her inventions but for Mr. Thomson’s alleged negligence. Id. at 177-78. The patentability of Ms. Davis’s inventions is controlled by U.S. patent law. Therefore, pat ent law is a necessary element of one of the legal malpractice claims present ed in Ms. Davis’s complaint, and the district court properly ex ercised jurisdiction pursuant to 28 U.S.C. § 1338(a).
B. Before we reach the merits, we must address Ms. Davis’s evidentiary contentions. We review evidentiary rulings that are not unique to our jurisdiction under the law of the regional circuit. Advanced Cardiovascular Sys ., Inc. v. Medtronic, Inc. , 265 F.3d 1294, 1308 (Fed. Cir. 2001) . The Sixth Circuit revi ews a district court’s evidentiary rulings for abuse of discretion. See Dickenson v. Cardiac & Thoracic Surgery of E. Tenn., P.C. , 388 F.3d 976, 980 (6th Cir. 2004). Ms. Davis argues that the district cour t abused its discretion in striking paragraph 5 of the affidavit of her patent law expert, Mr. O’Shaughnessy, which she filed in support of her motion for partial summary judgmen t. In paragraph 5, Mr. O’Shaughnessy opined that “an assessment of the patentability of an invention can be and routinely is performed without knowing what cl aims will eventually be made . . . [or] issue in a patent on that invention.” J.A. 955. Mr. O’Shaughne ssy also stated that he had

2009-1395 10performed “such a patentability analysis” and that he concluded Ms. Davis’s inventions were patentable based on this analysis. Id. The district court agreed with Def endants that Mr. O’S haughnessy’s opinion regarding the nature of a “ patentability assessment” had not appeared in his earlier-filed expert report. The court al so agreed that the assertions of paragraph 5 conflicted with Mr. O’Shaughnessy’s statements at deposition, where he testified that “patentability” referred to the question of whether claims were patentable over prior art and that he had never performed any patentability analysis. Further, the court observed that the opinions and assertions of paragraph 5 were clearly relevant to Defendants’ case: Defendants had attacked Mr. O’Shaughnessy’s exper t report primarily on the basis that he did not perform an adequate patentability a ssessment and had already deposed Mr. O’Shaughnessy on that point. Under the circumstances, the court determined that it would be unjust to consider these newly ra ised opinions and assertions, and struck paragraph 5 for that reason. In view of Mr. O’Shaughnessy’s inconsistent deposition testimony and his failure to in clude the patentability opinion of paragraph 5 in his expert report, the court did not abuse its discretion in striking paragraph 5. C. The district court granted summary judgmen t in favor of Defendants. We review a grant of summary judgment de novo , reapplying the same st andard as the district
court. Gemtron Corp. v. Saint-Gobain Corp. , 572 F.3d 1371, 1379 (Fed. Cir. 2009). “Summary judgment is appropriate when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law." Immunocept, LLC v. Fulbright & Jaworski, LLP , 504 F.3d 1281, 1286 (Fed. Cir. 2007) (internal citation omitted). “Summary judgment must be grant ed against a party who has not introduced

2009-1395 11evidence sufficient to establish the existence of an essential elem ent of that party's case, on which the party would bear the burden of proof at trial." Univ. of W. Va., Bd. of Trs. v. Van Voorhies , 278 F.3d 1288, 1295 (Fed. Cir. 2002). To prevail on a claim for legal malpract ice based on negligent representation, the plaintiff must establish that the attorney owed a duty to the plaintiff; that the attorney breached that duty and failed to conform to t he standard required by la w; and that “there is a causal connection between the conduct co mplained of and the resulting damage or loss.” Vahila , 674 N.E.2d at 1169. As discusse d above, the case-within-a-case doctrine applies to Ms. Davis’s malpractice cl aim relating to the U.S. applications. For similar reasons, the case-withi n-a-case doctrine applies to her malpractice claim relating to the PCT applications. Therefore, to sati sfy the causation pron g of the malpractice standard Ms. Davis must prove, by a prep onderance of the evidence, that she would have received patents on her inventions but for Mr. Thomson’s alleged negligence in preparing and filing the applications. Environmental Network , 893 N.E.2d at 178 (noting “the established rule that a plaintiff must establish by a preponderance of the evidence that defendant's actions were the proxim ate cause of plaintiff's losses”). Ms. Davis’s patent law expert, Mr. O’ Shaughnessy, devoted the majority of his report to explaining the ways in which the applications Mr. Thomson prepared and filed, as well as his legal adv ice, were deficient. We agree with the district court that Mr. O’Shaughnessy’s report provides sufficient ev idence to establish a genuine issue of material fact as to whether Mr. Thomson breached a duty he owed to Ms. Davis as her attorney. Mr. Thomson went on vacation, missed filing dates, and, by his own admission, filed an app lication which he rea lized contained a poorly drafted specification

2009-1395 12and claims which he intended to repair at a late r time. This is certainly not standard or adequate patent attorney representation, espec ially if, as Ms. Davis alleges, he did not inform her of his intention to proceed this way. However, even if Ms. Davis can establis h that Mr. Thomson breached a duty to her, she must still also prove causation, i. e., that absent his breach she would have obtained a patent. With respect to patentabilit y—the critical issue for causation—Mr. O’Shaughnessy opined only that “but for t he legal malpractice of Brouse McDowell identified throughout this report, Ms. Davi s would have been awar ded [U.S.] patents on her inventions” and t hat he had seen nothi ng in Brouse McDowell’s files or in the depositions taken in the case that “would have blocked her ability to have secured commercially meaningful patents on her in ventions.” J.A. at 1207. Mr. O’Shaughnessy’s report did not even address the patentability of Ms. Davis’s inventions under foreign patent law. T he district court observed that Mr. O’Shaughnessy had not performed a prior art search or a “patentabili ty analysis,” nor had he identified particular claims that could be made for Ms. Davis’s in ventions. Therefore, the court found that Mr. O’Shaughnessy’s patentability opinion lack ed adequate foundation and could not be relied upon by Ms. Davis as evidence of patentability. We agree with the district court’s conclusion. “We look to regional circuit law for the applicable standard controlling the fact ual foundation necessary to support an expert's opinion, which is not a matter peculiar to patent law.” Novartis Corp. v. Ben Venue Labs., Inc. , 271 F.3d 1043, 1051 (Fed. Cir. 2001). In the Sixth Circuit, “[c]onclusory statements unadorned with supporting facts are insufficient to establish a factual dispute that will defeat summary judgment.” Alexander v. CareSource , 576 F.3d

2009-1395 13551, 560 (6th Cir. 2009). Mr. O’Shaughnessy’s op inion that Ms. Davis’s inventions are patentable is precisely this type of conclusory statement. His expert report contains no affirmative analysis supporting his opinion on patentability; instead, the opinion is followed only by the equally conclusory a ssertion that Mr. O’Shaughnessy has seen nothing to “block” this patentability. An unsupported opinion such as this cannot and does not create a genuine issue of material fact as to the patentability of Ms. Davis’s inventions. To be clear, however, we reject the sugges tion that Ms. Davis would have had to identify claims for her inventions or perfo rm a patentability analysis similar to that required in an invalidity trial. Ms. Davis’s ul timate burden in this case is to establish the likelihood that her inventions would have been held patentable on examination in the PTO or any applicable national patent offi ce, in accordance with the criteria of patentability applied during examination. At the summary judgment stage, she had only to introduce evidence sufficient to establish an is sue of material fact as to patentability. Ms. Davis could have satisfied this initial burden in any num ber of ways. For example, in this case the PTO had issued rejections wit h respect to two of Ms. Davis’s three U.S. applications prior to the date of Mr. O’Shaughnessy’s ex pert report. Mr. O’Shaughnessy could have reviewed the prior art references cited in the office actions and discussed their effect on patentability. The case law is clear, however, that an expert’s naked conclusion is insuffi cient to survive summary judgment. Id. at 560. Because that is the only evid ence of patentability that Ms. Davis proffered with respect to her U.S. applications—and because she pro ffered no evidence at all with respect to

2009-1395 142009-1395 15 her PCT applications—we agree with the distri ct court that she fa iled to establish a genuine issue of material fact as to the patentability of her inventions. Because Ms. Davis failed to establish a ge nuine issue of material fact as to the patentability of her inventions, she cannot prevail on the causation element of her malpractice claim as a matter of law. Ther efore, the district court properly granted Defendants’ motion for summaryjudgment and entered judgment in their favor. We need not reach the district c ourt’s alternative conclusion that Ms. Davis failed to introduce evidence sufficient to raise an i ssue of material fa ct as to damages.
III. CONCLUSION We conclude that the district court pr operly exercised jurisdiction over Ms. Davis’s malpractice cause of action. We al so conclude that the di strict court did not abuse its discretion in striking portions of the supplemental affidavit of Ms. Davis’s patent law expert. Finally, we conclude t hat Ms. Davis failed to introduce evidence sufficient to establish a genuine issue of mate rial fact as to the patentability of her inventions and that the dist rict court properly granted su mmary judgment in favor of Defendants. For these reasons, the j udgment of the district court is AFFIRMED

. COSTS No costs.