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Lawyer May Be Liable for Weak Elliptical Patent

WEST PALM BEACH, Fla. (CN) - A lawyer must face claims that he botched his former client's patent application for a mobile elliptical invention, a federal judge ruled.

Dean Janssen says he was working as a chiropractor in early 2000 when he combined a bicycle and an elliptical exercise machine to make the first "self-propelled exercise, recreation and transport device."

Hoping to develop his invention, Janssen allegedly hired Barry Haley, Esq., with the firm of Malin, Haley, DiMaggio, Bowen & Lhota, to create and file a patent application with the United States Patent and Trademark Office.

Haley filed a first patent application on Janssen's behalf in late 2000, but it was "so negligently, incorrectly, and narrowly worded that they rendered the patent effectively worthless," Janssen says.

Haley obtained a second patent application in November 2002, but that application also allegedly contained claims "so negligently, incorrectly, and narrowly worded that they rendered the patent effectively worthless."

Janssen says he sold his chiropractic practice in 2002 to market his product, but no one would partner up with him because of the inadequate patents.

He filed suit after a competing self-propelled elliptical became a commercial success.

Larry Miller, who is not a party to the lawsuit, allegedly applied to patent his own mobile elliptical device in September 2002.

"The Miller patent, '127 Patent, issued on December 16, 2003 was much broader in scope and provided greater protection for the same improvements that plaintiff's invention made on the prior art," according to the court's summary of the complaint.

The owner of the Miller patent created the Elliptigo, and another product took off under the brand Streetslider, Janssen says.

Though both products allegedly feature the same improvements over the prior art as Janssen's invention, Janssen says he cannot claim infringement because of the "negligently drafted" patents.

Haley and the Malin Haley firm moved to dismiss the complaint for lack of subject-matter jurisdiction and failure to state a claim. They also say the lawsuit fails because Janssen allegedly should have sued the Miller patent holder as well.

U.S. District Judge Kenneth Marra concluded otherwise last week.

"Defendants contend that, for myriad reasons, plaintiff has no standing to bring a malpractice suit and that plaintiff cannot state a claim for malpractice," Marra wrote. "The court disagrees."

"The court rejects defendants' argument that plaintiff must first seek to invalidate the Miller patent or bring a suit against Larry Miller," he added. "The controversy at issue exists between plaintiff and the law firm against which he alleges malpractice. No third party is needed to give plaintiff standing or create a concrete controversy against the law firm or Mr. Haley. To the extent defendants contend plaintiff's claim for damages is speculative, the Court finds that damages are properly pled. Whether or not plaintiff can show these damages, however, is a question of fact that will not be addressed at the pleading stage. That stated, there is nothing improper about plaintiff's claim that had defendants drafted his patent in the manner the Miller patent was drafted, plaintiff would have had the same business opportunities as Larry Miller. Moreover, plaintiff may be able to show that had defendants drafted broader claims, he would have been able to succeed in an infringement claim against Larry Miller or recover a royalty against the manufacturers of the Elliptigo and the Streetstrider devices."

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