A client develops software and leases it to third party. The client hires a patent lawyer to file a patent application on the software. After the patent issues, the client directs the patent lawyer to sue the third party for patent infringement. The third party raises the “on-sale bar” rule at trial, which invalidates a patent if its subject matter was on sale more than one year before the patent application filing date. The court dismisses the lawsuit.

The client then fires the patent lawyer, and hires a different lawyer to re-litigate the case, raising the “experimental use” defense, which is an exception to the “on-sale bar” for certain limited sales that constitute on-going experimentation (that is, the software is still under development, with changes being made in response to the purchaser’s feedback). The court denied the re-litigation, stating that the experimental use defense was waived since it was not timely raised during the trial. The client then sues the original patent lawyer for malpractice.

The question before the Supreme Court is, should the malpractice suit heard in state court, which traditionally regulates and disciplines lawyers, or in federal court, which has exclusive jurisdiction for patent cases and would presumably be more familiar with the issues?

Oral argument this Wed.

Cornell’s Legal Information Institute preview of the case at:

http://www.law.cornell.edu/supct/cert/11-1118