Landmark Screens, L.L.C. v. Morgan, Lewis & Bockius, L.L.P, No. 11-1297 (Fed. Cir. 2012)Annotate this Case
Landmark invented an LED billboard and retained Kohler to file a patent application. Kohler filed the 096 application. USPTO indicated that the application contained multiple inventions. Kohler pursued two claims and withdrew others, intending that withdrawn claims would be pursued in divisional applications, to benefit from the 096 filing date. Kohler submitted an incomplete (916) divisional application, not using a postcard receipt to enable prompt notification of deficiencies. Months later, PTO issued notice of incomplete application. Kohler had changed firms. The anniversary of the 096 application’s publication passed; the 096 application became prior art against the 916 application under 35 U.S.C. 102(b). The attorneys did not immediately notify Landmark. Their petition to grant the 916 application an earlier filing date was dismissed. Landmark eventually filed suit alleging malpractice, negligence, and breach of fiduciary duty and reached a partial settlement. The state court dismissed remaining claims for lack of subject matter jurisdiction. Landmark filed the same claims in federal court, adding claims for breach of contract and fraud. The district court dismissed all except the fraud claim under a one-year limitations period and later dismissed the fraud claim under a three-year limitations period. The Federal Circuit reversed. Under California equitable tolling law, the state law fraud claim was timely filed.