(CN) – Former patent law firm Myers & Kaplan filed two frivolous claims on behalf of an inventor, the Federal Circuit ruled, leaving the issue of sanctions up to a federal judge in Georgia.
Myers & Kaplan, whose founding partners now work at Woodcock Washburn, represented Randall Carter, who allegedly invented a high-security locking assembly for safe deposit box doors.
Carter claimed his former employer, Acme Security, hired him for refusing to assign his patent rights to the company.
Chief U.S. District Judge Jack Camp dismissed all 15 claims and found three of them frivolous. Unsatisfied with Myers & Kaplan’s explanation for those claims, Camp sanctioned “plaintiff’s counsel” for $30,356. It was unclear whether the sanctions applied to the firm or the individual partners or both.
On appeal, the Federal Circuit agreed that two of the claims were frivolous, but said Judge Camp erred with respect to the third claim – breach of fiduciary duty – against the patent prosecuting attorney.
This count “involves a substantial question of federal patent law and is not frivolous,” Judge Timothy Dyk wrote for the three-judge panel.
But Myers & Kaplan offered no legal basis for the other two claims: that the defendants violated the Constitution’s patent clause and induced the Patent and Trademark Office to illegally disclose the patent application.
“We remand for the district court to determine whether sanctions should be imposed, and, if so, in what amount,” Dyk wrote.
Judge Pauline Newman dissented in part, saying she would have reversed the sanctions instead of remanding.