Legal Case Summary

Let's get right into the next and biggest versus most of the few 10-40 now. I'm very much for meeting these with me here on behalf of my five extra benches this morning. The fundamental issue before this court is when the mister benches case against Mr. Moss and his firm actually approved. Under New York law. Under New York law. We're under some other law for this. Let me ask you a question. Is there any doubt about what that this court rather than the second circuit has your signature over this appeal? How does your claim involved interpretation and application of patent will? That's what I quite understand. I have some ideas about it. I wonder if you can tell with that because I think there's nothing you can look through in the fact you are that says what kind of an inquiry a law firm should make before it tells the client that they think he has a patent on the bench. You're on a re-asked or something. Very same question. That's one of the reasons why the case was initially filed to the second circuit. However, the stations of the United States 28th, USC section 1338 which talks about jurisdiction of the courts and specifically the courts of the field specifically says that any case, any case that even remotely deals with the question of patent should be properly turned over to the federal district. When I did file my initial appeal, it was filed to the second circuit. Counsel from the other side and I then conferred and investigated together the stations that we both agreed that under the circumstances because the underlying issues, if this case wasn't in fact to be reversed and returned to the district court in the summer district of New York, has to do with whether a patent was valid and enforceable

. And so under that theory we're here before you. I don't think it's quite right to say the issue is the validity of the patent. The patent's already been adjudicated to be in fact. The issue seems to be whether a prior art search was made, it was up to the standards of a prior art searching. And it's not so clear that the nature of our extendable prior art search requires entering a substantial question of patent law as opposed to ordinary due diligence law. But your understanding is considered the expert court in the issues of patent law. And who better than than this court as an expert court in the areas of patent to decide what the due diligence should be. We don't have the ability to say we're more expert therefore we have jurisdiction. We only have jurisdiction. If resolving this case requires us to answer a substantial question of patent law. So what is the substantial question of patent law as opposed to due diligence law that we would necessarily have to answer to resolve this appeal? At this time there is no substantial question of patent law. The question simply is whether in fact a positive of action for legal malpractice accrued in December of 2007 or did it through the process of the standards? I understand your answer. So it doesn't arise or implicated the patent laws at that point. With a strict interpretation of the statues relating to the jurisdiction of this court in connection with patent issues it was our interpretation both mine and counsel for the appellate that we'd rather bring it here because even remotely it involves a question of patent law. The court is can't give us jurisdiction. I can't understand

. No matter we have no jurisdiction. So whether you agree with the other side that the case should be here you still have to establish the fact of the jurisdiction of the issue. And on what basis is that jurisdiction law? On the basis that the underlying issues involve the question of patent law. The underlying issue involve the question of patent law and answers what question of patent law? Let me make suggest to you one possible answer might be the question of what is comparable or comparable to prior law. I don't know the two practice that we found later on. The patent law, the patent law, the patent law, the patent law, the patent law, the patent law, the patent law, the patent law. But it's still might be a question of whether the prior law involves something that was comparable to the patent law. So what if there's still a prior law in some sort of suitcase, you might say, well, that nobody expected this. Your argument as I understand it is that they didn't make an adequate search. That is correct. If they had explained that if they had in fact engaged in the due diligence, even basic due diligence, in connection with the patent research, they would have found these two particular patents that eventually were submitted against Swiss patent. I'm sorry? One of them is a Swiss patent. Yes, Your Honor, but we have access to it. Does an emerging firm, conducting a patent search have the Swiss patent? Yes, Your Honor, absolutely. And I have to search right through a Japanese patent. Absolutely

. Certainly my patent law firm does. Absolutely. If 35 USC section 102A and being talked about anywhere that the prior art that exists out there, more than one year prior to the filing of an application, published anywhere in the world, there is a duty to go out there and find it. Because exactly this might happen at some future date after the client has incurred tremendous amount of costs and expense in going to law firms, securing the firm, relying on their opinion, relying on the patent search results, engaging in all the things that the inventors normally do to bring the product to market. But does that really depend on the relationship between the client and law firm as to the extent of the prior art search which is undertaken? I guess the client can request a worldwide search he paid for it. He can request a US search, we can request a search for a certain only other European country, or otherwise. So that's an agreement between the client and the firm and it's not just done undertaking completely because the worldwide search is for other expensive. And some clients don't like the idea of spending that kind of money for the world. But your Honor, only if the attorney actually recommends an access to the client, listen, this is the situation your patent might be declared invalid and unenforceful with a court of law. That's certainly our practice in our law firm when a client comes in and says I want to file for a patent, I want to secure a patent. I point out that the validity of the patent, that the value of the patent is its enforceability in court. In anticipation of what potentially can happen in a court of law by a defendant, we suggest that not only a US patent search be conducted, but a worldwide patent search is conducted. For the purpose of anticipating what possibly might happen, when a patient goes through the document. I think the majority according to that. Well. Resume

. Yes and no, with the charges of another issue. There are three final searches of the patent. There are post final searches, there are validity searches, and there are all scope searches they can be done for patents in patent application. But the decision was a provided. The client and the firm was at that particular time. If in fact the request was to file only in the US and only US are to be private searched before filing, that's what I asked that good. But how does that impact patent law? I'm still not sure about the jurisdiction of my aspect of the search, causing it to be a patent law issue. Because the legal malpractice involves a question of patent law. And a question of due diligence in connection with the validity of a patent and the enforceability of a patent. And the securing of that patent. What is the question of patent law then? Whether a foreign patent? Whether it can invalidate a US patent? Your ownership, this line of question is catching the little chef garden for the civil reason that we presume that says the court accepted the appeal that we were at the right court. I haven't really thought about that question and that issue. In reading the statute, I personally read the statute and say, so long as there's even an old ol of a patent somewhere in there, it deserves to be in this particular. The statute doesn't say remotely, which you mentioned three times earlier. And it doesn't say, I owed it even. The operating operating statute is substantial question of patent law

. That's why the three of us keep at will. What is the patent law question that has to be answered to resolve this appeal? And I'm still not sure we answered your answer. Is it the interpretation of 102A? Is that the question of patent law? No, no. The issue here in this case for the dismissal is when did the statute of limitations actually start to slip? I understand there are many more of them. I agree. I agree. I understand that I agree. Now the second term it didn't send the case here. You dismissed there and read five years by... By stipulation. Yes. We're not far as I understand the pink-hung rule from sending it to the second circuit. We conclude that we don't have jurisdiction because we can't identify a substantial question of patent law. That's central to resolve the appeal

. That's correct. We can send it back. All right, well, but why don't you address this? Let me ask you a question for a minute. We only have to make a conclusion. We do have jurisdiction. Then how do you get us to reverse the judgment in this case? We respect what I said with your honor that Mr. Benges would not have been able to truthfully and properly allege with a specificity that is required by the UK. I think that the case is issued by the Supreme Court. Even if we assume he didn't know and couldn't have known within three years, New York Law seems to be clear that the date of discovery of the problem doesn't count. It's the date of the bad act that starts the statute month. Your honor, it's not a question of discovery. The court at the statute specifically says that a cause of action accrues with every single one of the elements of that cause of action can be properly planned. In the process of both the arguments that have taken place, what has happened is that the court has completely ignored a very important element in the cause of action. The federal district court, the law of the Senate is just a court and the appellate which is the any New York case, the cause of action for legal malpractice, there's not a rule until the plaintiff is able to demonstrate precisely the total damage his U of C is claiming. No, I do not have a case, I couldn't find it. All the cases that I found for a member of the law case were wrong, they were wrong, they were wrong, they were wrong

. But a cause of action for legal malpractice accrues when the legal action is completed. Not the legal action, when the legal malpractice causes action, each and every one of the elements can be properly planned. My co-extends for that conversation. Well, let's look at the typical date when the patent is below two. I'm sorry? The patent is under the two OO2. I believe so. At that point, certainly you could demonstrate at least two elements of damage to the court. The one was the amount you pay the lawyers and two was whatever, expensive, you incurred in getting the patent. If you had to make two proofs from somewhere to see the examiner, that would be. So what happened to some damage is at least a coup. Your honor, you can't get to the question of damages unless you can actually stop showing loss or injury. There was no injury in that way. The plaintiff actually had a patent. He had a benefit. He was not liable for anything. In the case of action

. He was liable for the amount you were completing and we paid the lawyers. He had paid nothing. There was no liability. They were fully paid. There was not an issue. When we talk about liability, we're talking about an injury, something that I have to do to somebody else as a result of something that I caused that person. That's what we're talking about, the liability or injury. The most important thing here is the third element in the court, which is the breach of the duty caused a loss or an injury. The damages at that point were speculative because there was no injury and there was no loss. The time when an injury and loss actually occurred was during that litigation. That's when the injury occurred. That's when the loss occurred. By accepting what the court is proposing, the federal district court, or the southern district is proposing, what we're basically doing is we're taking the four elements of the cause of action and we're emerging and we do too. That illegal amount of practice, cause of action can be asserted that many of you can show a breach of duty. When it happened to be injury and loss in the process, the damages are speculative only to be extended because there is no identifiable injury or loss. Even the students for one moment that somebody that Mr

. Benches went out and got the second and the third and the fourth opinion. That is simply an opinion. That's what we want. Again, dealing with an injury or loss is speculative. Under Ashcraft versus Eight Bar, how will the client be able to submit enough facts before the court in 2002 or 2005 to plausibly plead a cause of action? How can you push it over and say, in fact, this is my injury, this is my loss, it was all speculation. There are many new occurrences. You told me that you didn't have any new or case. I did not. Supporting the position as there are any new occurrences, discuss this issue. I wish there was your honor, but I'm unable to find it. There is as far as another is now the new oracle. Yes, Your Honor. Is New York law applicable? There. New oracle is another section. No, the sectional mutation is very clear that the ones that are cited in our briefs, those are the sectional mutations that actually apply. It's only your extreme law

. Yes, Your Honor. It's three. Yes, Your Honor. From the date of a rule and the definition of a rule is laid out in a point. No. When do you say the truth? December of 2002. That's when the injury in the law speaks. That when the pattern was invalidated? Yes, Your Honor. What was it about that point? What happened at that point that you say first the rule was about? I'm sorry? What wasn't the rule to cause a factor? The rule of some was that this extra report? It was the extra report together with the judges opinion that in fact this was a pattern that was invalidated. The judges should have the final question. No, Your Honor. It was simply in discussions on the record. So this is not a clear rule? Yes. What happened to the law based on the law? Yes. So there's no judge of what the factors are about? No, Your Honor. However, think about the damages going forward every time my client seeks to assert this pattern. During discovery, this information is all going to come out. But there is no judge of invalidating the factors. No. The factors still will go down to the truth. Yes, Your Honor. What did the judges say about the validity of the pattern? Among other things that it was invalid then that my client should do the same. All right, we'll let you have the final question. We'll start to preserve and we'll hear from Mr. Davis. Your Honor. Good morning. The plaintiff here alleges that the allegedly negligent legal advice was given in 2000. And in plaintiff dozen to nine, the latest that defendants continue to represent him was at the time the pattern was issued in September of 2002. The plaintiff also does a deny that there's a three-year statute of limitations for non-medical, not practice in New York and that there's no discovery. Yet it's a discovery rule by another name that's precisely what plaintiff has been advocating before the district court and continues to advocate before this court. Now, do you first discuss the jurisdiction issue? Yes, one of those issues can be here in a second, sir

. During discovery, this information is all going to come out. But there is no judge of invalidating the factors. No. The factors still will go down to the truth. Yes, Your Honor. What did the judges say about the validity of the pattern? Among other things that it was invalid then that my client should do the same. All right, we'll let you have the final question. We'll start to preserve and we'll hear from Mr. Davis. Your Honor. Good morning. The plaintiff here alleges that the allegedly negligent legal advice was given in 2000. And in plaintiff dozen to nine, the latest that defendants continue to represent him was at the time the pattern was issued in September of 2002. The plaintiff also does a deny that there's a three-year statute of limitations for non-medical, not practice in New York and that there's no discovery. Yet it's a discovery rule by another name that's precisely what plaintiff has been advocating before the district court and continues to advocate before this court. Now, do you first discuss the jurisdiction issue? Yes, one of those issues can be here in a second, sir. On what grounds do the statute of jurisdiction be for the federal court? Well, you're on the first of all, as a panelist appeal, a panel file this appeal in this court, we don't have a cross appeal of income. I understand that you've filed one second, sir. Apparently, they did, apparently, after consultations which did not involve me personally, since it's not a part of today's record, I'm not aware of all the details. I was not the attorney involved, but accepting what was represented to the court a few moments ago, that there were consultations with other lawyers from my firm, and it was agreed that it could be filed here in this court. I've looked at the statute and what I can only presume, you're on it, is that where the statute says if the jurisdiction of a lower court was based in a hole or in part on the patent laws, the stipulation of the agreement must have been reached, and by the fact that if this motion to dismiss had not been granted below, and the case were to go to trial, that patent issues were... The search issues would have been part of the trial and the trial record, and therefore since it was in a hole or in part, the jurisdiction below was in a hole or in part related to the patent statutes, that the statute, this statute, the trial, when it found, triggered the jurisdiction of this court. So that is apparently, I think, there's a way to be placed. This couldn't this case have been decided on the merits without any determination of any question if patent was supposed to be a firm and could establish that the search had made in this case was accepted as appropriate search in any patent case. That has nothing to do with interpreting or applying any provision of the patent rule, is that involves what the duties of a lawyer are, and if you could have stopped the fact, I'd take you to claim on the merits of this case. I believe you're right, Your Honor. And therefore, I wonder how do you find that there is a question of patent rule that is necessary for the plaintiff to prevent? I understand your point, Your Honor. Two things. First, just as a minor point, I know it's come up in the product discussion before plaintiff's counsel. There's been some discussion about the search that was done by our firm

. On what grounds do the statute of jurisdiction be for the federal court? Well, you're on the first of all, as a panelist appeal, a panel file this appeal in this court, we don't have a cross appeal of income. I understand that you've filed one second, sir. Apparently, they did, apparently, after consultations which did not involve me personally, since it's not a part of today's record, I'm not aware of all the details. I was not the attorney involved, but accepting what was represented to the court a few moments ago, that there were consultations with other lawyers from my firm, and it was agreed that it could be filed here in this court. I've looked at the statute and what I can only presume, you're on it, is that where the statute says if the jurisdiction of a lower court was based in a hole or in part on the patent laws, the stipulation of the agreement must have been reached, and by the fact that if this motion to dismiss had not been granted below, and the case were to go to trial, that patent issues were... The search issues would have been part of the trial and the trial record, and therefore since it was in a hole or in part, the jurisdiction below was in a hole or in part related to the patent statutes, that the statute, this statute, the trial, when it found, triggered the jurisdiction of this court. So that is apparently, I think, there's a way to be placed. This couldn't this case have been decided on the merits without any determination of any question if patent was supposed to be a firm and could establish that the search had made in this case was accepted as appropriate search in any patent case. That has nothing to do with interpreting or applying any provision of the patent rule, is that involves what the duties of a lawyer are, and if you could have stopped the fact, I'd take you to claim on the merits of this case. I believe you're right, Your Honor. And therefore, I wonder how do you find that there is a question of patent rule that is necessary for the plaintiff to prevent? I understand your point, Your Honor. Two things. First, just as a minor point, I know it's come up in the product discussion before plaintiff's counsel. There's been some discussion about the search that was done by our firm. It is not a part of this record, which is purely on the motion to disown this based on the statute of invocations. So it is not something that's currently before this court, but the allegation was that either there was no search or that the search was done improperly. And if the record were to be developed if this court did not affirm and there were a trial, it would emerge that actually plaintiff instructed that there be no search. There was a search. But what will to answer your Honor's procedural question, I believe that's right, that there are a number of different ways that the case could have moved if the motion did dismiss on the sexual limitations, whether it was not been granted, that one could possibly not have involved the patent laws at all as your Honor correctly stated. I suppose one could equally postulate that it could have done in other ways in which patent laws might have been implicated. And I can only suppose that it was that possibility that was at issue when the 20 to 5 of the appeal in this court and I don't know if I'm apparently going to do that. What's your answer to the argument of opposing counsel that rather than discovering the wrongdoing, the important thing here is when injury first occurred, she seems to trace the moment of injury to when the district judge said informally but on the record to endow the validity of the patent. Yes, sure. And that really isn't a discovery rule because the discovery would have to do with the prosecution conduct of the lawyer. That really does, her point seems to speak to the time of injury. And she puts it that when rate cost and this patent looks like 11 to me or whatever he's in, what's your response to that? Judge Charlie believe what plaintiff's position is here is that as I believe was also mentioned previously that was when the expert report emerged in a different litigation in December of 2007 that said there was prior art that was at that moment in time. That's the moment in time they can as the moment when they quote came to understand for the first time. So you're saying that's just a discovery argument and under New York law the time of discovery isn't helpful except in medical malpractice or not relevant here. But she seems to be saying whether it's rate cost comment or the expert report either way that it's not a matter of that when we first discovered the malpractice, she's saying that's the first time that we were in fact injured. You're on our leave that's been addressed sufficiently by New York law

. It is not a part of this record, which is purely on the motion to disown this based on the statute of invocations. So it is not something that's currently before this court, but the allegation was that either there was no search or that the search was done improperly. And if the record were to be developed if this court did not affirm and there were a trial, it would emerge that actually plaintiff instructed that there be no search. There was a search. But what will to answer your Honor's procedural question, I believe that's right, that there are a number of different ways that the case could have moved if the motion did dismiss on the sexual limitations, whether it was not been granted, that one could possibly not have involved the patent laws at all as your Honor correctly stated. I suppose one could equally postulate that it could have done in other ways in which patent laws might have been implicated. And I can only suppose that it was that possibility that was at issue when the 20 to 5 of the appeal in this court and I don't know if I'm apparently going to do that. What's your answer to the argument of opposing counsel that rather than discovering the wrongdoing, the important thing here is when injury first occurred, she seems to trace the moment of injury to when the district judge said informally but on the record to endow the validity of the patent. Yes, sure. And that really isn't a discovery rule because the discovery would have to do with the prosecution conduct of the lawyer. That really does, her point seems to speak to the time of injury. And she puts it that when rate cost and this patent looks like 11 to me or whatever he's in, what's your response to that? Judge Charlie believe what plaintiff's position is here is that as I believe was also mentioned previously that was when the expert report emerged in a different litigation in December of 2007 that said there was prior art that was at that moment in time. That's the moment in time they can as the moment when they quote came to understand for the first time. So you're saying that's just a discovery argument and under New York law the time of discovery isn't helpful except in medical malpractice or not relevant here. But she seems to be saying whether it's rate cost comment or the expert report either way that it's not a matter of that when we first discovered the malpractice, she's saying that's the first time that we were in fact injured. You're on our leave that's been addressed sufficiently by New York law. New York law has directly addressed the issue of when does injury occur for purposes of a cruel of a legal malpractice action. And what the court of appeals eyes Courtney York has said several different occasions both in McCoy and after the cases slide in the comments group is that the injury occurs at the time the legal malpractice of time that allegedly negligent advice is given. That is the moment of time and indeed in both cases the facts they're almost directly parallel with the kind of argument that tell us making here in the afternoon case which is a legal malpractice case the plaintiff tried to argue that gee it doesn't it doesn't accrue until the IRS assesses me and I find out that I actually owe these taxes. Court said no that's not going to be to be accrue at the time the lawyer gave you the allegedly negligent advice. I was a court ever addressed this such question that is whether a claim for a legal malpractice can be said to accrue at a time when no damage is brought to the table. I have a claim. I treat that she was unable to find any cases. I believe your honor that both the acronym and McCoy addressed the question whether or not the argument of having only speculative or not yet actual damages is sufficient to put off the time of the cruel of a legal malpractice. And the court I think very clearly in both cases both in the situation involving the IRS tax assessment situation where it was legal advice relating to taxation as well as in the McCoy case more recent court appeal case where the issue was advice that had been given with respect and accident had been given with respect to the it was a wife plaintiff in a divorce action. Whether or not the lawyer had properly given advice and made final use of concerning the husband's pre-retired death benefits and she tried to argue that I don't know whether or not I will have non-specited actual damages until the husband dies and we see what happens. The court addressed that exact question in its opinion and said no we can't have a decoding statute of limitations hanging out there the ether that way. It's got to be at the time the actual legal act the legal malpractice the bad advice for the bad legal services were rendered that's the time injury occurs that's the time when the plaintiff could begin to rely on it. And that's when we start the talk. Rather unusual though doesn't it because if we don't know that the advice that you're receiving is going to injury you for seven to ten years like a license for a particular business transaction that is declared away seven to ten years with based upon legal advice which was a run use. Does that mean that you were statually taken to prevent you from recovering any damages that one doesn't make any sense? Well I have two responses here on our first is I respectfully refer you to Judge Ray Cross ruling in this case where he makes the point I believe he even mentioned something along those lines that he might not be happy with some of the implications of this statute and the case laws as the court of appeals has issued the case law. But that is in fact the law and whether those are the policy implications or not he was obliged to enforce it and you're on we would believe that just like in almost any situation of obvious that you're talking about the overall policy implications and potential ramifications one can make a policy arguments on both sides

. New York law has directly addressed the issue of when does injury occur for purposes of a cruel of a legal malpractice action. And what the court of appeals eyes Courtney York has said several different occasions both in McCoy and after the cases slide in the comments group is that the injury occurs at the time the legal malpractice of time that allegedly negligent advice is given. That is the moment of time and indeed in both cases the facts they're almost directly parallel with the kind of argument that tell us making here in the afternoon case which is a legal malpractice case the plaintiff tried to argue that gee it doesn't it doesn't accrue until the IRS assesses me and I find out that I actually owe these taxes. Court said no that's not going to be to be accrue at the time the lawyer gave you the allegedly negligent advice. I was a court ever addressed this such question that is whether a claim for a legal malpractice can be said to accrue at a time when no damage is brought to the table. I have a claim. I treat that she was unable to find any cases. I believe your honor that both the acronym and McCoy addressed the question whether or not the argument of having only speculative or not yet actual damages is sufficient to put off the time of the cruel of a legal malpractice. And the court I think very clearly in both cases both in the situation involving the IRS tax assessment situation where it was legal advice relating to taxation as well as in the McCoy case more recent court appeal case where the issue was advice that had been given with respect and accident had been given with respect to the it was a wife plaintiff in a divorce action. Whether or not the lawyer had properly given advice and made final use of concerning the husband's pre-retired death benefits and she tried to argue that I don't know whether or not I will have non-specited actual damages until the husband dies and we see what happens. The court addressed that exact question in its opinion and said no we can't have a decoding statute of limitations hanging out there the ether that way. It's got to be at the time the actual legal act the legal malpractice the bad advice for the bad legal services were rendered that's the time injury occurs that's the time when the plaintiff could begin to rely on it. And that's when we start the talk. Rather unusual though doesn't it because if we don't know that the advice that you're receiving is going to injury you for seven to ten years like a license for a particular business transaction that is declared away seven to ten years with based upon legal advice which was a run use. Does that mean that you were statually taken to prevent you from recovering any damages that one doesn't make any sense? Well I have two responses here on our first is I respectfully refer you to Judge Ray Cross ruling in this case where he makes the point I believe he even mentioned something along those lines that he might not be happy with some of the implications of this statute and the case laws as the court of appeals has issued the case law. But that is in fact the law and whether those are the policy implications or not he was obliged to enforce it and you're on we would believe that just like in almost any situation of obvious that you're talking about the overall policy implications and potential ramifications one can make a policy arguments on both sides. The arguments that the Supreme Court has recently made with respect to repose and the need for finality on the one hand versus on the other hand fairness to the individual plaintiffs. What about the litigation? Yes you're on. But if we consider the practical circumstances of all patent cases if I'm a patent prosecutor in turn and Arthur by ours is the inventor and he comes to me and I take the case that I file an application on his behalf and let's assume that all of my analysis and everything that I wrote up in the application wrote testically incomprehensible. Under the average time and examination the statute of limitations in New York will have run before the patent even issued so that we no chance for somebody to enforce it and then find out that the patent was invalid because I totally vulnerable to every single thing I did in the prosecution. It's likely to be a decade later before there'll be any invalid issue raised in a court so in every patent case then malpractice at least in New York totally off the table because it will never be within three years of when the prosecution misconduct by the attorney of purpose. In this case we've acknowledged for purposes of this appeal and for purposes of this motion that under New York's continuous representation doctrine you would even extend the time all the way through the issuance of the patent which was in September of 2002 which was about two years and two or three months out here the application was filed. So you have that continuous representation doctrine which in many ways is there to address some of the precise issues that your honor just mentioned. So after the application you have to have the issue. You can make the point about issuance date versus advice date and that's a very fair point and nicely put. But on the other hand the patent is a good for 20 years and that's supposed that the inventor by ours is patent issues and nobody's infringing it for 10 years. And then suddenly somebody makes it infringing product and so he goes off to a certain patent file and then it turns out the patent's blatant invalid because everything prosecuting attorney which held it was totally incompetent. But now we're 10 years from issuance but only halfway through the life of the patent and malpractice is out the window in every such case. Your honor if there is in fact a situation where the period of time three years has passed after the claim has accrued and injury has occurred as both this statute and the court appeals at the state of the court have ruled that they accrue then that will happen and that would be the implication. I can make the arguments and I'm sure this panel is well aware of them it doesn't need to hear from me on the other side in favor of statute's limitations. So look at trial and trial. It's a little bit trial and trial later

. The arguments that the Supreme Court has recently made with respect to repose and the need for finality on the one hand versus on the other hand fairness to the individual plaintiffs. What about the litigation? Yes you're on. But if we consider the practical circumstances of all patent cases if I'm a patent prosecutor in turn and Arthur by ours is the inventor and he comes to me and I take the case that I file an application on his behalf and let's assume that all of my analysis and everything that I wrote up in the application wrote testically incomprehensible. Under the average time and examination the statute of limitations in New York will have run before the patent even issued so that we no chance for somebody to enforce it and then find out that the patent was invalid because I totally vulnerable to every single thing I did in the prosecution. It's likely to be a decade later before there'll be any invalid issue raised in a court so in every patent case then malpractice at least in New York totally off the table because it will never be within three years of when the prosecution misconduct by the attorney of purpose. In this case we've acknowledged for purposes of this appeal and for purposes of this motion that under New York's continuous representation doctrine you would even extend the time all the way through the issuance of the patent which was in September of 2002 which was about two years and two or three months out here the application was filed. So you have that continuous representation doctrine which in many ways is there to address some of the precise issues that your honor just mentioned. So after the application you have to have the issue. You can make the point about issuance date versus advice date and that's a very fair point and nicely put. But on the other hand the patent is a good for 20 years and that's supposed that the inventor by ours is patent issues and nobody's infringing it for 10 years. And then suddenly somebody makes it infringing product and so he goes off to a certain patent file and then it turns out the patent's blatant invalid because everything prosecuting attorney which held it was totally incompetent. But now we're 10 years from issuance but only halfway through the life of the patent and malpractice is out the window in every such case. Your honor if there is in fact a situation where the period of time three years has passed after the claim has accrued and injury has occurred as both this statute and the court appeals at the state of the court have ruled that they accrue then that will happen and that would be the implication. I can make the arguments and I'm sure this panel is well aware of them it doesn't need to hear from me on the other side in favor of statute's limitations. So look at trial and trial. It's a little bit trial and trial later. Suppose that in the same hypothetical I need you before the suit is filed on day one. The day after the patent issue is the suit is filed. The suit is going to take three years to get tried if not more. So if issuance date is a magic date to start the three years national limitations on malpractice running by the time the district court gets around the holding the patent that I procured for a valid in too late. Well your honor I'm not sure that that would necessarily be the case either because by that time you would have you would have a cruel you would have filed your complaint you would then have litigation my I presume that once you have an act of litigation that you've already filed your complaint and your statute you're within your statute as long as you file your your damages claim against against the lawyers within that three years. So I'm probably meant to be in free street case of the file the next day after the patent issue. But because the adjudication times are so slow the malpractice three years statute of limitations in almost every case will already have run before the district court in the I thought it's only too late to start in this month. It's an interesting point your honor I suppose what I would do if I represented such a plaintiff and I was in the middle of that litigation and it was taking three years I suppose I might be guided by very clear or reoccurred appeal cases that I've just decided to you in several others I would file an action and I would claim that I've been injured that I've already incurred legal fees I've already incurred patent fees marketing fees and expenses all fees which judge Friedman correctly said already in this record that this particular plaintiff already incurred I have a cause of action and if I have the answer is the patent is in balance just because the defendant in the infringement action asserts and answer the patent is in balance that crystallizes the injury to the patent. Again your honor I think my the two actions are somewhere separate in order to prove my legal malpractice I don't think it's the exact same standard is what the infringement action would have to find in order to find the patent valid if I found that the lawyer even if I ultimately prevail for example in the patent action on the infringement case I could still potentially prove that my lawyers acted way less than the standards of reasonable care and prevailing my malpractice action and I might still have some damage. What if the expert report at the end of discovery for the accused infringer contains an assertion of invulidity of the past if we use that that still might be three years plus after the filing of the lawsuit that filed the day after the patent issue. All those events which could trigger additional damages and or additional knowledge in the mind of the plaintiff that he either has a better cause of action a stronger cause of action or even a possible cause of action could all happen on outside the three or statute of limitations that is the case you are under. I'm saying that the patent team would file a patent against the lawyer or the other infringement act and somebody else would never be an action moron in this court. You have to admit that this back and then valid at that point. Well I'm not sure there wouldn't be a way to say that I've got this consenting and I'm prosecuting that case but in order because I have a three or statute of limitations at the court of appeals of New York has said I have to live with and I have to do what I have to do to protect my own rights. I'm going to put it all down here. Your answer to the problems to which the other members of the panel have just been alluded is that if it's fact the New York three or statute in the way it's been interpreted was a serious problem with respect to claims of legal malpractice and patent litigation and only in patent litigation

. Suppose that in the same hypothetical I need you before the suit is filed on day one. The day after the patent issue is the suit is filed. The suit is going to take three years to get tried if not more. So if issuance date is a magic date to start the three years national limitations on malpractice running by the time the district court gets around the holding the patent that I procured for a valid in too late. Well your honor I'm not sure that that would necessarily be the case either because by that time you would have you would have a cruel you would have filed your complaint you would then have litigation my I presume that once you have an act of litigation that you've already filed your complaint and your statute you're within your statute as long as you file your your damages claim against against the lawyers within that three years. So I'm probably meant to be in free street case of the file the next day after the patent issue. But because the adjudication times are so slow the malpractice three years statute of limitations in almost every case will already have run before the district court in the I thought it's only too late to start in this month. It's an interesting point your honor I suppose what I would do if I represented such a plaintiff and I was in the middle of that litigation and it was taking three years I suppose I might be guided by very clear or reoccurred appeal cases that I've just decided to you in several others I would file an action and I would claim that I've been injured that I've already incurred legal fees I've already incurred patent fees marketing fees and expenses all fees which judge Friedman correctly said already in this record that this particular plaintiff already incurred I have a cause of action and if I have the answer is the patent is in balance just because the defendant in the infringement action asserts and answer the patent is in balance that crystallizes the injury to the patent. Again your honor I think my the two actions are somewhere separate in order to prove my legal malpractice I don't think it's the exact same standard is what the infringement action would have to find in order to find the patent valid if I found that the lawyer even if I ultimately prevail for example in the patent action on the infringement case I could still potentially prove that my lawyers acted way less than the standards of reasonable care and prevailing my malpractice action and I might still have some damage. What if the expert report at the end of discovery for the accused infringer contains an assertion of invulidity of the past if we use that that still might be three years plus after the filing of the lawsuit that filed the day after the patent issue. All those events which could trigger additional damages and or additional knowledge in the mind of the plaintiff that he either has a better cause of action a stronger cause of action or even a possible cause of action could all happen on outside the three or statute of limitations that is the case you are under. I'm saying that the patent team would file a patent against the lawyer or the other infringement act and somebody else would never be an action moron in this court. You have to admit that this back and then valid at that point. Well I'm not sure there wouldn't be a way to say that I've got this consenting and I'm prosecuting that case but in order because I have a three or statute of limitations at the court of appeals of New York has said I have to live with and I have to do what I have to do to protect my own rights. I'm going to put it all down here. Your answer to the problems to which the other members of the panel have just been alluded is that if it's fact the New York three or statute in the way it's been interpreted was a serious problem with respect to claims of legal malpractice and patent litigation and only in patent litigation. And it's up to the New York legislature to change the law that wants to create an exception or a different standard for patent agencies but we are bound here in this court by the interpretation of the New York courts of New York law. Precisely. If I could just address the final point that Judge Friedman made early on in addition to making the point that the court of appeals New York has ruled on this issue that the legislature has passed the relevant statute and the court of appeals has issued the case law that we're now bound and guided by. We don't even have to reach the issue of whether or not that law applies in New York and that's because here even under plaintiffs and appellants own record and their own complaint they had nonspeculative actual damages as of the time of September 2002 and they list them in their complaint paragraph 1619 or 20. Pay Jator the joint appendix, patent cost manufacturing cost marketing cost selling cost they call them investments but whether they call them investments or damages or costs or anything else these are clearly nonspeculative actual damages that they already had in September 2002. So even under plaintiffs own theory which of course we do not expect when we've been discussing at this point but even under plaintiffs own theory they would have had a positive action that they could have brought back in. It looks a less money perhaps than they now see but still definitely the most precise. All right thank you. Thank you. With regard to the very last point about the damages being in the country there are four of us for the approval of our practice law suit that must be strict. Do it reach of duty injury and damages the damages are clearly distinct from the injury it is our position you're on today that there was no way that we would have been able to assert some good facts in connection with the third element of injury until December 2007. So that even if in fact there was a number of that we could come up with in connection with the damages that would have been speculative in the sense that what are you coming here asking for it you haven't been injured nothing has happened to you that injury didn't occur to the December 2007. Going back to your honor your honor's position about whether there is any case law in the state of New York for illegal malpractice the question of legal malpractice not counting malpractice as we stand here today neither on nor a telly is that been able to supply any cases in the state of New York specifically addressed when a positive action for legal malpractice. The cases are before the sport are all accounting cases those cases do stand for the proposition of when the sexual conditions begins to run and the fact that the cause of actually needs to improve those cases are distinguishable from the case here before the sport today in that in those cases the injury was ascertainable at the time that the breach of duty actually occurred. The injury was ascertainable the court is very very good. The injury occurred on the ill theory when the patent issued because the patent was from the injury because the patent was invalid due to the antibiotic concern

. And it's up to the New York legislature to change the law that wants to create an exception or a different standard for patent agencies but we are bound here in this court by the interpretation of the New York courts of New York law. Precisely. If I could just address the final point that Judge Friedman made early on in addition to making the point that the court of appeals New York has ruled on this issue that the legislature has passed the relevant statute and the court of appeals has issued the case law that we're now bound and guided by. We don't even have to reach the issue of whether or not that law applies in New York and that's because here even under plaintiffs and appellants own record and their own complaint they had nonspeculative actual damages as of the time of September 2002 and they list them in their complaint paragraph 1619 or 20. Pay Jator the joint appendix, patent cost manufacturing cost marketing cost selling cost they call them investments but whether they call them investments or damages or costs or anything else these are clearly nonspeculative actual damages that they already had in September 2002. So even under plaintiffs own theory which of course we do not expect when we've been discussing at this point but even under plaintiffs own theory they would have had a positive action that they could have brought back in. It looks a less money perhaps than they now see but still definitely the most precise. All right thank you. Thank you. With regard to the very last point about the damages being in the country there are four of us for the approval of our practice law suit that must be strict. Do it reach of duty injury and damages the damages are clearly distinct from the injury it is our position you're on today that there was no way that we would have been able to assert some good facts in connection with the third element of injury until December 2007. So that even if in fact there was a number of that we could come up with in connection with the damages that would have been speculative in the sense that what are you coming here asking for it you haven't been injured nothing has happened to you that injury didn't occur to the December 2007. Going back to your honor your honor's position about whether there is any case law in the state of New York for illegal malpractice the question of legal malpractice not counting malpractice as we stand here today neither on nor a telly is that been able to supply any cases in the state of New York specifically addressed when a positive action for legal malpractice. The cases are before the sport are all accounting cases those cases do stand for the proposition of when the sexual conditions begins to run and the fact that the cause of actually needs to improve those cases are distinguishable from the case here before the sport today in that in those cases the injury was ascertainable at the time that the breach of duty actually occurred. The injury was ascertainable the court is very very good. The injury occurred on the ill theory when the patent issued because the patent was from the injury because the patent was invalid due to the antibiotic concern. The fact that the patent was not a good case was because there was no damage in the loss to my claim. In fact my claim is better all of the time when the patent was in his hand than before he had the patent now he can ask the right for the eyes of the law to prevent others from making using or selling his invention. The injury was in damage, injury or losses to the damage of personal property that's the black dictionary actually defines it. There is no loss in the patent the patent in his mind was enforceable there was no injury until December of 2007 and that's what distinguishes this case from the accounting cases that have been submitted in the sport of our position. In the last time I had with that as you said there was no injury until 207 it's a common place in Patelowgayfield that the accused infringed you that discovered prior art that the plaintiff had not discovered and that there was a not-reporting return for his family. The fact that an expert came up and said I discovered true preaching of prior art that I believe invalidated the patent doesn't mean that that's when the evidence revealed the damages occurred because, could have been I don't know anything about it but in any case it would have happened since the answer is those two pieces of prior art are distinguishable they don't involve that. You're on our let's put it back in perspective in terms of procedure. We drafted a complaint we brought to the court the court basically dismissed it on the basis of the statute of implications. The implication was when you did that when Judge Rayoff did that was that I'm going to draft that exactly the same complaint with the same level of specificity back in 2002 or 2005. Under the actual ashram versus Iparc Supreme Court case which says that I need to alleged sufficient facts so that my cause of action is never possible or likely as my adversaries argue but rather that it is plausible. The court says it has to push the case over the line so that the claim is much more rather to be rather than up to be. That's the implication that Judge Rayoff is saying. My position is because I'm the one who drafted that complaint that there is no winning I could have drafted a complaint in 2005 without being speculative about the injury. There was no injury the argument that would have not happened was that I'm not. I think it's often you have hired an opinion counsel to give you an opinion on the validity of the patent as soon as the patent had an issue and if the expert opined that was almost certain the patent was invalid then why isn't that enough right then in there to prove injury? Because for every expert that I could hire at that point with that some sort of court imprimatur of validity as happened before Judge Foreign speaking incident it was a different case it wasn't for Judge Rayoff. Without some sort of imprimatur of validity from the court that my position of in the loo of the patent I for every expert that I could hire that says the patent was invalid there is an expert that says that it's invalid so we're going to be involved

. The fact that the patent was not a good case was because there was no damage in the loss to my claim. In fact my claim is better all of the time when the patent was in his hand than before he had the patent now he can ask the right for the eyes of the law to prevent others from making using or selling his invention. The injury was in damage, injury or losses to the damage of personal property that's the black dictionary actually defines it. There is no loss in the patent the patent in his mind was enforceable there was no injury until December of 2007 and that's what distinguishes this case from the accounting cases that have been submitted in the sport of our position. In the last time I had with that as you said there was no injury until 207 it's a common place in Patelowgayfield that the accused infringed you that discovered prior art that the plaintiff had not discovered and that there was a not-reporting return for his family. The fact that an expert came up and said I discovered true preaching of prior art that I believe invalidated the patent doesn't mean that that's when the evidence revealed the damages occurred because, could have been I don't know anything about it but in any case it would have happened since the answer is those two pieces of prior art are distinguishable they don't involve that. You're on our let's put it back in perspective in terms of procedure. We drafted a complaint we brought to the court the court basically dismissed it on the basis of the statute of implications. The implication was when you did that when Judge Rayoff did that was that I'm going to draft that exactly the same complaint with the same level of specificity back in 2002 or 2005. Under the actual ashram versus Iparc Supreme Court case which says that I need to alleged sufficient facts so that my cause of action is never possible or likely as my adversaries argue but rather that it is plausible. The court says it has to push the case over the line so that the claim is much more rather to be rather than up to be. That's the implication that Judge Rayoff is saying. My position is because I'm the one who drafted that complaint that there is no winning I could have drafted a complaint in 2005 without being speculative about the injury. There was no injury the argument that would have not happened was that I'm not. I think it's often you have hired an opinion counsel to give you an opinion on the validity of the patent as soon as the patent had an issue and if the expert opined that was almost certain the patent was invalid then why isn't that enough right then in there to prove injury? Because for every expert that I could hire at that point with that some sort of court imprimatur of validity as happened before Judge Foreign speaking incident it was a different case it wasn't for Judge Rayoff. Without some sort of imprimatur of validity from the court that my position of in the loo of the patent I for every expert that I could hire that says the patent was invalid there is an expert that says that it's invalid so we're going to be involved. So if you believe that the patent validity is a question you raise it at that point you get your experts and then you proceed with either action. That was a joke we're in the group. That was exactly the argument that I mean before Judge Rayoff I positive that if in fact we take that position now you have a patent holder which will pass a patent who's open joy. So who thinks he has an monopoly who can do all these things and now what you're saying is oh well because the New York state law is this way you patent holder have the burden to go in and hire an expert in court additional cost you're on point it out how expensive it is to do a full blown patent search to do an additional search to determine whether the patent is invalid and unenforceable. That is extremely difficult on the patent holder after he has a per 40 50 60 100 thousand dollars in horse to get the patent both domestically and internationally. It is burdened that is truly prejudicial to the patent holder and may very well cycle creativity and invention because if I as a patent holder they okay so what is a hard disk patent attorney now going to go hire the other one the other one to get additional opinions. You have to draw the line somewhere actually we have a patent holder and I want to draw the line somewhere on time. Thank you both for very merciful and clear argument for taking appeal under advisement and of course not taking free free sex. All rise.

Let's get right into the next and biggest versus most of the few 10-40 now. I'm very much for meeting these with me here on behalf of my five extra benches this morning. The fundamental issue before this court is when the mister benches case against Mr. Moss and his firm actually approved. Under New York law. Under New York law. We're under some other law for this. Let me ask you a question. Is there any doubt about what that this court rather than the second circuit has your signature over this appeal? How does your claim involved interpretation and application of patent will? That's what I quite understand. I have some ideas about it. I wonder if you can tell with that because I think there's nothing you can look through in the fact you are that says what kind of an inquiry a law firm should make before it tells the client that they think he has a patent on the bench. You're on a re-asked or something. Very same question. That's one of the reasons why the case was initially filed to the second circuit. However, the stations of the United States 28th, USC section 1338 which talks about jurisdiction of the courts and specifically the courts of the field specifically says that any case, any case that even remotely deals with the question of patent should be properly turned over to the federal district. When I did file my initial appeal, it was filed to the second circuit. Counsel from the other side and I then conferred and investigated together the stations that we both agreed that under the circumstances because the underlying issues, if this case wasn't in fact to be reversed and returned to the district court in the summer district of New York, has to do with whether a patent was valid and enforceable. And so under that theory we're here before you. I don't think it's quite right to say the issue is the validity of the patent. The patent's already been adjudicated to be in fact. The issue seems to be whether a prior art search was made, it was up to the standards of a prior art searching. And it's not so clear that the nature of our extendable prior art search requires entering a substantial question of patent law as opposed to ordinary due diligence law. But your understanding is considered the expert court in the issues of patent law. And who better than than this court as an expert court in the areas of patent to decide what the due diligence should be. We don't have the ability to say we're more expert therefore we have jurisdiction. We only have jurisdiction. If resolving this case requires us to answer a substantial question of patent law. So what is the substantial question of patent law as opposed to due diligence law that we would necessarily have to answer to resolve this appeal? At this time there is no substantial question of patent law. The question simply is whether in fact a positive of action for legal malpractice accrued in December of 2007 or did it through the process of the standards? I understand your answer. So it doesn't arise or implicated the patent laws at that point. With a strict interpretation of the statues relating to the jurisdiction of this court in connection with patent issues it was our interpretation both mine and counsel for the appellate that we'd rather bring it here because even remotely it involves a question of patent law. The court is can't give us jurisdiction. I can't understand. No matter we have no jurisdiction. So whether you agree with the other side that the case should be here you still have to establish the fact of the jurisdiction of the issue. And on what basis is that jurisdiction law? On the basis that the underlying issues involve the question of patent law. The underlying issue involve the question of patent law and answers what question of patent law? Let me make suggest to you one possible answer might be the question of what is comparable or comparable to prior law. I don't know the two practice that we found later on. The patent law, the patent law, the patent law, the patent law, the patent law, the patent law, the patent law, the patent law. But it's still might be a question of whether the prior law involves something that was comparable to the patent law. So what if there's still a prior law in some sort of suitcase, you might say, well, that nobody expected this. Your argument as I understand it is that they didn't make an adequate search. That is correct. If they had explained that if they had in fact engaged in the due diligence, even basic due diligence, in connection with the patent research, they would have found these two particular patents that eventually were submitted against Swiss patent. I'm sorry? One of them is a Swiss patent. Yes, Your Honor, but we have access to it. Does an emerging firm, conducting a patent search have the Swiss patent? Yes, Your Honor, absolutely. And I have to search right through a Japanese patent. Absolutely. Certainly my patent law firm does. Absolutely. If 35 USC section 102A and being talked about anywhere that the prior art that exists out there, more than one year prior to the filing of an application, published anywhere in the world, there is a duty to go out there and find it. Because exactly this might happen at some future date after the client has incurred tremendous amount of costs and expense in going to law firms, securing the firm, relying on their opinion, relying on the patent search results, engaging in all the things that the inventors normally do to bring the product to market. But does that really depend on the relationship between the client and law firm as to the extent of the prior art search which is undertaken? I guess the client can request a worldwide search he paid for it. He can request a US search, we can request a search for a certain only other European country, or otherwise. So that's an agreement between the client and the firm and it's not just done undertaking completely because the worldwide search is for other expensive. And some clients don't like the idea of spending that kind of money for the world. But your Honor, only if the attorney actually recommends an access to the client, listen, this is the situation your patent might be declared invalid and unenforceful with a court of law. That's certainly our practice in our law firm when a client comes in and says I want to file for a patent, I want to secure a patent. I point out that the validity of the patent, that the value of the patent is its enforceability in court. In anticipation of what potentially can happen in a court of law by a defendant, we suggest that not only a US patent search be conducted, but a worldwide patent search is conducted. For the purpose of anticipating what possibly might happen, when a patient goes through the document. I think the majority according to that. Well. Resume. Yes and no, with the charges of another issue. There are three final searches of the patent. There are post final searches, there are validity searches, and there are all scope searches they can be done for patents in patent application. But the decision was a provided. The client and the firm was at that particular time. If in fact the request was to file only in the US and only US are to be private searched before filing, that's what I asked that good. But how does that impact patent law? I'm still not sure about the jurisdiction of my aspect of the search, causing it to be a patent law issue. Because the legal malpractice involves a question of patent law. And a question of due diligence in connection with the validity of a patent and the enforceability of a patent. And the securing of that patent. What is the question of patent law then? Whether a foreign patent? Whether it can invalidate a US patent? Your ownership, this line of question is catching the little chef garden for the civil reason that we presume that says the court accepted the appeal that we were at the right court. I haven't really thought about that question and that issue. In reading the statute, I personally read the statute and say, so long as there's even an old ol of a patent somewhere in there, it deserves to be in this particular. The statute doesn't say remotely, which you mentioned three times earlier. And it doesn't say, I owed it even. The operating operating statute is substantial question of patent law. That's why the three of us keep at will. What is the patent law question that has to be answered to resolve this appeal? And I'm still not sure we answered your answer. Is it the interpretation of 102A? Is that the question of patent law? No, no. The issue here in this case for the dismissal is when did the statute of limitations actually start to slip? I understand there are many more of them. I agree. I agree. I understand that I agree. Now the second term it didn't send the case here. You dismissed there and read five years by... By stipulation. Yes. We're not far as I understand the pink-hung rule from sending it to the second circuit. We conclude that we don't have jurisdiction because we can't identify a substantial question of patent law. That's central to resolve the appeal. That's correct. We can send it back. All right, well, but why don't you address this? Let me ask you a question for a minute. We only have to make a conclusion. We do have jurisdiction. Then how do you get us to reverse the judgment in this case? We respect what I said with your honor that Mr. Benges would not have been able to truthfully and properly allege with a specificity that is required by the UK. I think that the case is issued by the Supreme Court. Even if we assume he didn't know and couldn't have known within three years, New York Law seems to be clear that the date of discovery of the problem doesn't count. It's the date of the bad act that starts the statute month. Your honor, it's not a question of discovery. The court at the statute specifically says that a cause of action accrues with every single one of the elements of that cause of action can be properly planned. In the process of both the arguments that have taken place, what has happened is that the court has completely ignored a very important element in the cause of action. The federal district court, the law of the Senate is just a court and the appellate which is the any New York case, the cause of action for legal malpractice, there's not a rule until the plaintiff is able to demonstrate precisely the total damage his U of C is claiming. No, I do not have a case, I couldn't find it. All the cases that I found for a member of the law case were wrong, they were wrong, they were wrong, they were wrong. But a cause of action for legal malpractice accrues when the legal action is completed. Not the legal action, when the legal malpractice causes action, each and every one of the elements can be properly planned. My co-extends for that conversation. Well, let's look at the typical date when the patent is below two. I'm sorry? The patent is under the two OO2. I believe so. At that point, certainly you could demonstrate at least two elements of damage to the court. The one was the amount you pay the lawyers and two was whatever, expensive, you incurred in getting the patent. If you had to make two proofs from somewhere to see the examiner, that would be. So what happened to some damage is at least a coup. Your honor, you can't get to the question of damages unless you can actually stop showing loss or injury. There was no injury in that way. The plaintiff actually had a patent. He had a benefit. He was not liable for anything. In the case of action. He was liable for the amount you were completing and we paid the lawyers. He had paid nothing. There was no liability. They were fully paid. There was not an issue. When we talk about liability, we're talking about an injury, something that I have to do to somebody else as a result of something that I caused that person. That's what we're talking about, the liability or injury. The most important thing here is the third element in the court, which is the breach of the duty caused a loss or an injury. The damages at that point were speculative because there was no injury and there was no loss. The time when an injury and loss actually occurred was during that litigation. That's when the injury occurred. That's when the loss occurred. By accepting what the court is proposing, the federal district court, or the southern district is proposing, what we're basically doing is we're taking the four elements of the cause of action and we're emerging and we do too. That illegal amount of practice, cause of action can be asserted that many of you can show a breach of duty. When it happened to be injury and loss in the process, the damages are speculative only to be extended because there is no identifiable injury or loss. Even the students for one moment that somebody that Mr. Benches went out and got the second and the third and the fourth opinion. That is simply an opinion. That's what we want. Again, dealing with an injury or loss is speculative. Under Ashcraft versus Eight Bar, how will the client be able to submit enough facts before the court in 2002 or 2005 to plausibly plead a cause of action? How can you push it over and say, in fact, this is my injury, this is my loss, it was all speculation. There are many new occurrences. You told me that you didn't have any new or case. I did not. Supporting the position as there are any new occurrences, discuss this issue. I wish there was your honor, but I'm unable to find it. There is as far as another is now the new oracle. Yes, Your Honor. Is New York law applicable? There. New oracle is another section. No, the sectional mutation is very clear that the ones that are cited in our briefs, those are the sectional mutations that actually apply. It's only your extreme law. Yes, Your Honor. It's three. Yes, Your Honor. From the date of a rule and the definition of a rule is laid out in a point. No. When do you say the truth? December of 2002. That's when the injury in the law speaks. That when the pattern was invalidated? Yes, Your Honor. What was it about that point? What happened at that point that you say first the rule was about? I'm sorry? What wasn't the rule to cause a factor? The rule of some was that this extra report? It was the extra report together with the judges opinion that in fact this was a pattern that was invalidated. The judges should have the final question. No, Your Honor. It was simply in discussions on the record. So this is not a clear rule? Yes. What happened to the law based on the law? Yes. So there's no judge of what the factors are about? No, Your Honor. However, think about the damages going forward every time my client seeks to assert this pattern. During discovery, this information is all going to come out. But there is no judge of invalidating the factors. No. The factors still will go down to the truth. Yes, Your Honor. What did the judges say about the validity of the pattern? Among other things that it was invalid then that my client should do the same. All right, we'll let you have the final question. We'll start to preserve and we'll hear from Mr. Davis. Your Honor. Good morning. The plaintiff here alleges that the allegedly negligent legal advice was given in 2000. And in plaintiff dozen to nine, the latest that defendants continue to represent him was at the time the pattern was issued in September of 2002. The plaintiff also does a deny that there's a three-year statute of limitations for non-medical, not practice in New York and that there's no discovery. Yet it's a discovery rule by another name that's precisely what plaintiff has been advocating before the district court and continues to advocate before this court. Now, do you first discuss the jurisdiction issue? Yes, one of those issues can be here in a second, sir. On what grounds do the statute of jurisdiction be for the federal court? Well, you're on the first of all, as a panelist appeal, a panel file this appeal in this court, we don't have a cross appeal of income. I understand that you've filed one second, sir. Apparently, they did, apparently, after consultations which did not involve me personally, since it's not a part of today's record, I'm not aware of all the details. I was not the attorney involved, but accepting what was represented to the court a few moments ago, that there were consultations with other lawyers from my firm, and it was agreed that it could be filed here in this court. I've looked at the statute and what I can only presume, you're on it, is that where the statute says if the jurisdiction of a lower court was based in a hole or in part on the patent laws, the stipulation of the agreement must have been reached, and by the fact that if this motion to dismiss had not been granted below, and the case were to go to trial, that patent issues were... The search issues would have been part of the trial and the trial record, and therefore since it was in a hole or in part, the jurisdiction below was in a hole or in part related to the patent statutes, that the statute, this statute, the trial, when it found, triggered the jurisdiction of this court. So that is apparently, I think, there's a way to be placed. This couldn't this case have been decided on the merits without any determination of any question if patent was supposed to be a firm and could establish that the search had made in this case was accepted as appropriate search in any patent case. That has nothing to do with interpreting or applying any provision of the patent rule, is that involves what the duties of a lawyer are, and if you could have stopped the fact, I'd take you to claim on the merits of this case. I believe you're right, Your Honor. And therefore, I wonder how do you find that there is a question of patent rule that is necessary for the plaintiff to prevent? I understand your point, Your Honor. Two things. First, just as a minor point, I know it's come up in the product discussion before plaintiff's counsel. There's been some discussion about the search that was done by our firm. It is not a part of this record, which is purely on the motion to disown this based on the statute of invocations. So it is not something that's currently before this court, but the allegation was that either there was no search or that the search was done improperly. And if the record were to be developed if this court did not affirm and there were a trial, it would emerge that actually plaintiff instructed that there be no search. There was a search. But what will to answer your Honor's procedural question, I believe that's right, that there are a number of different ways that the case could have moved if the motion did dismiss on the sexual limitations, whether it was not been granted, that one could possibly not have involved the patent laws at all as your Honor correctly stated. I suppose one could equally postulate that it could have done in other ways in which patent laws might have been implicated. And I can only suppose that it was that possibility that was at issue when the 20 to 5 of the appeal in this court and I don't know if I'm apparently going to do that. What's your answer to the argument of opposing counsel that rather than discovering the wrongdoing, the important thing here is when injury first occurred, she seems to trace the moment of injury to when the district judge said informally but on the record to endow the validity of the patent. Yes, sure. And that really isn't a discovery rule because the discovery would have to do with the prosecution conduct of the lawyer. That really does, her point seems to speak to the time of injury. And she puts it that when rate cost and this patent looks like 11 to me or whatever he's in, what's your response to that? Judge Charlie believe what plaintiff's position is here is that as I believe was also mentioned previously that was when the expert report emerged in a different litigation in December of 2007 that said there was prior art that was at that moment in time. That's the moment in time they can as the moment when they quote came to understand for the first time. So you're saying that's just a discovery argument and under New York law the time of discovery isn't helpful except in medical malpractice or not relevant here. But she seems to be saying whether it's rate cost comment or the expert report either way that it's not a matter of that when we first discovered the malpractice, she's saying that's the first time that we were in fact injured. You're on our leave that's been addressed sufficiently by New York law. New York law has directly addressed the issue of when does injury occur for purposes of a cruel of a legal malpractice action. And what the court of appeals eyes Courtney York has said several different occasions both in McCoy and after the cases slide in the comments group is that the injury occurs at the time the legal malpractice of time that allegedly negligent advice is given. That is the moment of time and indeed in both cases the facts they're almost directly parallel with the kind of argument that tell us making here in the afternoon case which is a legal malpractice case the plaintiff tried to argue that gee it doesn't it doesn't accrue until the IRS assesses me and I find out that I actually owe these taxes. Court said no that's not going to be to be accrue at the time the lawyer gave you the allegedly negligent advice. I was a court ever addressed this such question that is whether a claim for a legal malpractice can be said to accrue at a time when no damage is brought to the table. I have a claim. I treat that she was unable to find any cases. I believe your honor that both the acronym and McCoy addressed the question whether or not the argument of having only speculative or not yet actual damages is sufficient to put off the time of the cruel of a legal malpractice. And the court I think very clearly in both cases both in the situation involving the IRS tax assessment situation where it was legal advice relating to taxation as well as in the McCoy case more recent court appeal case where the issue was advice that had been given with respect and accident had been given with respect to the it was a wife plaintiff in a divorce action. Whether or not the lawyer had properly given advice and made final use of concerning the husband's pre-retired death benefits and she tried to argue that I don't know whether or not I will have non-specited actual damages until the husband dies and we see what happens. The court addressed that exact question in its opinion and said no we can't have a decoding statute of limitations hanging out there the ether that way. It's got to be at the time the actual legal act the legal malpractice the bad advice for the bad legal services were rendered that's the time injury occurs that's the time when the plaintiff could begin to rely on it. And that's when we start the talk. Rather unusual though doesn't it because if we don't know that the advice that you're receiving is going to injury you for seven to ten years like a license for a particular business transaction that is declared away seven to ten years with based upon legal advice which was a run use. Does that mean that you were statually taken to prevent you from recovering any damages that one doesn't make any sense? Well I have two responses here on our first is I respectfully refer you to Judge Ray Cross ruling in this case where he makes the point I believe he even mentioned something along those lines that he might not be happy with some of the implications of this statute and the case laws as the court of appeals has issued the case law. But that is in fact the law and whether those are the policy implications or not he was obliged to enforce it and you're on we would believe that just like in almost any situation of obvious that you're talking about the overall policy implications and potential ramifications one can make a policy arguments on both sides. The arguments that the Supreme Court has recently made with respect to repose and the need for finality on the one hand versus on the other hand fairness to the individual plaintiffs. What about the litigation? Yes you're on. But if we consider the practical circumstances of all patent cases if I'm a patent prosecutor in turn and Arthur by ours is the inventor and he comes to me and I take the case that I file an application on his behalf and let's assume that all of my analysis and everything that I wrote up in the application wrote testically incomprehensible. Under the average time and examination the statute of limitations in New York will have run before the patent even issued so that we no chance for somebody to enforce it and then find out that the patent was invalid because I totally vulnerable to every single thing I did in the prosecution. It's likely to be a decade later before there'll be any invalid issue raised in a court so in every patent case then malpractice at least in New York totally off the table because it will never be within three years of when the prosecution misconduct by the attorney of purpose. In this case we've acknowledged for purposes of this appeal and for purposes of this motion that under New York's continuous representation doctrine you would even extend the time all the way through the issuance of the patent which was in September of 2002 which was about two years and two or three months out here the application was filed. So you have that continuous representation doctrine which in many ways is there to address some of the precise issues that your honor just mentioned. So after the application you have to have the issue. You can make the point about issuance date versus advice date and that's a very fair point and nicely put. But on the other hand the patent is a good for 20 years and that's supposed that the inventor by ours is patent issues and nobody's infringing it for 10 years. And then suddenly somebody makes it infringing product and so he goes off to a certain patent file and then it turns out the patent's blatant invalid because everything prosecuting attorney which held it was totally incompetent. But now we're 10 years from issuance but only halfway through the life of the patent and malpractice is out the window in every such case. Your honor if there is in fact a situation where the period of time three years has passed after the claim has accrued and injury has occurred as both this statute and the court appeals at the state of the court have ruled that they accrue then that will happen and that would be the implication. I can make the arguments and I'm sure this panel is well aware of them it doesn't need to hear from me on the other side in favor of statute's limitations. So look at trial and trial. It's a little bit trial and trial later. Suppose that in the same hypothetical I need you before the suit is filed on day one. The day after the patent issue is the suit is filed. The suit is going to take three years to get tried if not more. So if issuance date is a magic date to start the three years national limitations on malpractice running by the time the district court gets around the holding the patent that I procured for a valid in too late. Well your honor I'm not sure that that would necessarily be the case either because by that time you would have you would have a cruel you would have filed your complaint you would then have litigation my I presume that once you have an act of litigation that you've already filed your complaint and your statute you're within your statute as long as you file your your damages claim against against the lawyers within that three years. So I'm probably meant to be in free street case of the file the next day after the patent issue. But because the adjudication times are so slow the malpractice three years statute of limitations in almost every case will already have run before the district court in the I thought it's only too late to start in this month. It's an interesting point your honor I suppose what I would do if I represented such a plaintiff and I was in the middle of that litigation and it was taking three years I suppose I might be guided by very clear or reoccurred appeal cases that I've just decided to you in several others I would file an action and I would claim that I've been injured that I've already incurred legal fees I've already incurred patent fees marketing fees and expenses all fees which judge Friedman correctly said already in this record that this particular plaintiff already incurred I have a cause of action and if I have the answer is the patent is in balance just because the defendant in the infringement action asserts and answer the patent is in balance that crystallizes the injury to the patent. Again your honor I think my the two actions are somewhere separate in order to prove my legal malpractice I don't think it's the exact same standard is what the infringement action would have to find in order to find the patent valid if I found that the lawyer even if I ultimately prevail for example in the patent action on the infringement case I could still potentially prove that my lawyers acted way less than the standards of reasonable care and prevailing my malpractice action and I might still have some damage. What if the expert report at the end of discovery for the accused infringer contains an assertion of invulidity of the past if we use that that still might be three years plus after the filing of the lawsuit that filed the day after the patent issue. All those events which could trigger additional damages and or additional knowledge in the mind of the plaintiff that he either has a better cause of action a stronger cause of action or even a possible cause of action could all happen on outside the three or statute of limitations that is the case you are under. I'm saying that the patent team would file a patent against the lawyer or the other infringement act and somebody else would never be an action moron in this court. You have to admit that this back and then valid at that point. Well I'm not sure there wouldn't be a way to say that I've got this consenting and I'm prosecuting that case but in order because I have a three or statute of limitations at the court of appeals of New York has said I have to live with and I have to do what I have to do to protect my own rights. I'm going to put it all down here. Your answer to the problems to which the other members of the panel have just been alluded is that if it's fact the New York three or statute in the way it's been interpreted was a serious problem with respect to claims of legal malpractice and patent litigation and only in patent litigation. And it's up to the New York legislature to change the law that wants to create an exception or a different standard for patent agencies but we are bound here in this court by the interpretation of the New York courts of New York law. Precisely. If I could just address the final point that Judge Friedman made early on in addition to making the point that the court of appeals New York has ruled on this issue that the legislature has passed the relevant statute and the court of appeals has issued the case law that we're now bound and guided by. We don't even have to reach the issue of whether or not that law applies in New York and that's because here even under plaintiffs and appellants own record and their own complaint they had nonspeculative actual damages as of the time of September 2002 and they list them in their complaint paragraph 1619 or 20. Pay Jator the joint appendix, patent cost manufacturing cost marketing cost selling cost they call them investments but whether they call them investments or damages or costs or anything else these are clearly nonspeculative actual damages that they already had in September 2002. So even under plaintiffs own theory which of course we do not expect when we've been discussing at this point but even under plaintiffs own theory they would have had a positive action that they could have brought back in. It looks a less money perhaps than they now see but still definitely the most precise. All right thank you. Thank you. With regard to the very last point about the damages being in the country there are four of us for the approval of our practice law suit that must be strict. Do it reach of duty injury and damages the damages are clearly distinct from the injury it is our position you're on today that there was no way that we would have been able to assert some good facts in connection with the third element of injury until December 2007. So that even if in fact there was a number of that we could come up with in connection with the damages that would have been speculative in the sense that what are you coming here asking for it you haven't been injured nothing has happened to you that injury didn't occur to the December 2007. Going back to your honor your honor's position about whether there is any case law in the state of New York for illegal malpractice the question of legal malpractice not counting malpractice as we stand here today neither on nor a telly is that been able to supply any cases in the state of New York specifically addressed when a positive action for legal malpractice. The cases are before the sport are all accounting cases those cases do stand for the proposition of when the sexual conditions begins to run and the fact that the cause of actually needs to improve those cases are distinguishable from the case here before the sport today in that in those cases the injury was ascertainable at the time that the breach of duty actually occurred. The injury was ascertainable the court is very very good. The injury occurred on the ill theory when the patent issued because the patent was from the injury because the patent was invalid due to the antibiotic concern. The fact that the patent was not a good case was because there was no damage in the loss to my claim. In fact my claim is better all of the time when the patent was in his hand than before he had the patent now he can ask the right for the eyes of the law to prevent others from making using or selling his invention. The injury was in damage, injury or losses to the damage of personal property that's the black dictionary actually defines it. There is no loss in the patent the patent in his mind was enforceable there was no injury until December of 2007 and that's what distinguishes this case from the accounting cases that have been submitted in the sport of our position. In the last time I had with that as you said there was no injury until 207 it's a common place in Patelowgayfield that the accused infringed you that discovered prior art that the plaintiff had not discovered and that there was a not-reporting return for his family. The fact that an expert came up and said I discovered true preaching of prior art that I believe invalidated the patent doesn't mean that that's when the evidence revealed the damages occurred because, could have been I don't know anything about it but in any case it would have happened since the answer is those two pieces of prior art are distinguishable they don't involve that. You're on our let's put it back in perspective in terms of procedure. We drafted a complaint we brought to the court the court basically dismissed it on the basis of the statute of implications. The implication was when you did that when Judge Rayoff did that was that I'm going to draft that exactly the same complaint with the same level of specificity back in 2002 or 2005. Under the actual ashram versus Iparc Supreme Court case which says that I need to alleged sufficient facts so that my cause of action is never possible or likely as my adversaries argue but rather that it is plausible. The court says it has to push the case over the line so that the claim is much more rather to be rather than up to be. That's the implication that Judge Rayoff is saying. My position is because I'm the one who drafted that complaint that there is no winning I could have drafted a complaint in 2005 without being speculative about the injury. There was no injury the argument that would have not happened was that I'm not. I think it's often you have hired an opinion counsel to give you an opinion on the validity of the patent as soon as the patent had an issue and if the expert opined that was almost certain the patent was invalid then why isn't that enough right then in there to prove injury? Because for every expert that I could hire at that point with that some sort of court imprimatur of validity as happened before Judge Foreign speaking incident it was a different case it wasn't for Judge Rayoff. Without some sort of imprimatur of validity from the court that my position of in the loo of the patent I for every expert that I could hire that says the patent was invalid there is an expert that says that it's invalid so we're going to be involved. So if you believe that the patent validity is a question you raise it at that point you get your experts and then you proceed with either action. That was a joke we're in the group. That was exactly the argument that I mean before Judge Rayoff I positive that if in fact we take that position now you have a patent holder which will pass a patent who's open joy. So who thinks he has an monopoly who can do all these things and now what you're saying is oh well because the New York state law is this way you patent holder have the burden to go in and hire an expert in court additional cost you're on point it out how expensive it is to do a full blown patent search to do an additional search to determine whether the patent is invalid and unenforceable. That is extremely difficult on the patent holder after he has a per 40 50 60 100 thousand dollars in horse to get the patent both domestically and internationally. It is burdened that is truly prejudicial to the patent holder and may very well cycle creativity and invention because if I as a patent holder they okay so what is a hard disk patent attorney now going to go hire the other one the other one to get additional opinions. You have to draw the line somewhere actually we have a patent holder and I want to draw the line somewhere on time. Thank you both for very merciful and clear argument for taking appeal under advisement and of course not taking free free sex. All rise