Stephen Byrne v. Wood Herron & Evans (CAFC 2011-1012) nonprecedential; Judges Lourie, Gajarsa, and O'Malley (author)

The patent claims had a limitation of "a generally planar outboard flail stabilizing surface," which Black & Decker's product lacked. The planar surface was an unnecessary limitation to patentability, Byrne thought. Hence the suit against his attorneys.

Byrne sued for malpractice in Kentucky state court. WHE, knowing that Judge Danny C Reeves was an easy mark, got the case bumped to federal court. On appeal, the CAFC panel saw no reason that was justified, even as its case law holds it to be so.

WHE got the judge to stay discovery, pending a summary judgment motion, which was granted without WHE even submitting expert testimony. 

In support of his opposition, Byrne submitted two affidavits: one from William Kiesel, a patent attorney, and another from Byrne himself. Kiesel's opinion discussed the standard of care for a patent attorney and WHE's alleged negligence, as well as the scope of the prior art Bartholomew patent (U.S. Patent No. 4,091,536), on which the examiner relied in rejecting some of Byrne's original claims.  Byrne's affidavit primarily related to the nature of his invention, the scope of the Bartholomew patent, and the novel features of his invention that were independent of the "planar" limitation.

WHE moved to strike portions of both the Kiesel and the Byrne affidavits, arguing that Kiesel was not qualified to provide expert testimony as to the technical aspects of the invention and prior art, and that portions of Byrne's affidavit should be stricken because they contradict the record or are irrelevant.  Notably, WHE did not challenge whether Kiesel was qualified to opine on the standard of care for a patent prosecutor, and it did not argue that Byrne was not a person of ordinary skill in the art or otherwise unqualified to offer expert testimony.  In response, Byrne argued that the Kiesel and Byrne affidavits complement and rely on each other, such that they "work together as they should, each supporting the other with respect to technical matters and patent matters." Plaintiff's Response to Defendant's Motion to Strike Portions of the Affidavit of William David Kiesel at 2, Byrne v. Wood, Herron & Evans, LLP, Case No. 2:08-cv-102 (E.D. Ky. Mar. 9, 2009), ECF 67.  As it relates to his own affivadit, Byrne expressly argued that he was a person of at least ordinary skill in the art and qualified to testify as an expert because he was the inventor of the '815 patent, and because he had substantial experience in the design, manufacture and use of string trimmers.

Initially, the district court granted WHE's motion to strike Kiesel's affidavit, sua sponte deciding that Kiesel was "not qualified to provide expert testimony on the issue of legal malpractice in the patent application process." Byrne v. Wood, Herron & Evans, LLP, 2009 WL 2382415, at *3 (E.D. Ky. July 30, 2009).  It reached this decision despite the fact that Kiesel had worked as a patent attorney for 40 years, written and prosecuted over 500 patent applications, served as an adjunct professor of patent law, and previously prepared expert reports or provided expert testimony on patent-related issues, including in four legal malpractice cases.  The court found that, because Kentucky law requires expert testimony on the standard of care in a malpractice action unless it is so obvious as to be familiar to a lay person, Byrne could not defeat summary judgment without such testimony.  Id. at *2 (citing Stephens v. Denison, 150 S.W.3d 80, 82 (Ky. Ct. App. 2004).  Accordingly, the court granted summary judgment to WHE.  Id. at *6.  The court also denied WHE's motion to strike Byrne's affidavit as moot.  Id. 

Byrne moved for reconsideration of the court's ruling, citing relevant case law regarding expert testimony and providing a supplemental affidavit from Kiesel.  After considering Byrne's new argument and supplemental material, the district court vacated its decision and recon- sidered WHE's motion for summary judgment.  Byrne v. Wood, Herron & Evans LLP, 2010 WL 3394678, at *1 (E.D. Ky. Aug. 26, 2010). In its ultimate decision, the court found that Kiesel was qualified to provide testimony "regarding the standard of care in the patent application process" and struck only the portions of Kiesel's affidavit relating to technical aspects of the Byrne patent and the prior art.  Id. at *5. 

The court, however, sua sponte determined that Byrne was not a person of ordinary skill in the art, though it did so without identifying the requisite level of skill.  Based on that conclusion, the court struck the portions of Byrne's affidavit purporting to provide expert testimony, finding that "Byrne provides no information from which the Court could conclude that he is qualified to testify as an expert on this subject." Id. at *7. It noted that "[t]he sum of Byrne's qualifications, as set forth in his affidavit, are a bachelor of science degree in an unspecified area of study and experience 'operating a landscaping company that maintained the lawns of apartment complexes and condominiums.'" Id.  The district court also found that, even if Byrne was a person of ordinary skill in the art, he is not necessarily qualified as an expert.  Id. (citing Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008)).  Once the district court struck the technical aspects of Kiesel's affidavit and excluded Byrne as an expert entirely, Byrne's opposition was devoid of any technical expert testimony.  Accordingly, the district court granted Defendants' motion for summary judgment. 

The appeals court found the district court to have grossly abused its discretion.

Finally, the procedural posture of this case exacerbates the district court's error.  Here, WHE never argued that Byrne was not a person of ordinary skill in the art, and the parties did not address the level of skill in the art anywhere in their summary judgment briefing.  While Byrne does not argue that a district court may never exclude expert testimony sua sponte, the district court's decision to do so without any argument or evidence of the level of skill in the art is particularly problematic.  In addition, the early stage at which WHE filed its motion, combined with the district court's decision to stay most discovery, further limited the record on this question.  

WHE proved its integrity with lawyerly trash talk. That aside, the merits of the case have yet to be determined.

For that reason, WHE's suggestion that it was Byrne's duty to come forward with evidence of the relevant level of skill in this context is disingenuous.  Having asked the court to stay discovery to file a targeted motion for summary judgment that did not raise the question of Byrne's level of skill in the art, WHE cannot fault Byrne for failing to engage in an analysis regarding that very issue. 

Vacated and remanded; back to the same "problematic" judge.