The opinion of the court was delivered by: O'neill, J.
Plaintiffs ASTech International, LLC, Christopher Cashman, Robert Mullen, Ronald Cravens, Clair Gustafson, Kenneth Odde and Bruce Van Der Kamp filed a complaint against defendants Lawrence A. Husick, Robert S. Lipton, Laurence A. Weinberger and the law firm of Lipton, Weinberger & Husick, asserting six claims arising out of defendants' alleged legal malpractice. Presently before me are defendants' motion for summary judgment and plaintiffs' response thereto. For the following reasons, I will grant partial summary judgment in favor of defendants. The remainder of plaintiffs' claims will be held in abeyance until the United States Patent and Trademark Office issues a final decision on plaintiffs' on muzzle patent application.
Plaintiffs developed and owned two inventions relevant to this lawsuit. The first was a "method for positively identifying livestock and use thereof in legal instruments relating thereto" ("livestock identification invention"). U.S. Patent Provisional App. No. 60/351,128 (Jan. 23, 2002) (Pl.'s Exh. C).*fn1 This invention transcribed immutable characteristics of an animal--i.e., DNA, retinal blood vessel patterns or nose prints--into an "alphanumeric, human readable character string." Id. at ¶¶ 0066-67. The invention was designed to replace the more traumatic and invasive hot-iron branding identification system. Id. at ¶ 0003. The second was a "method and composition for delivery of medicants to animals" ("on muzzle invention"). U.S. Patent App. No. 10/084,592 (Feb. 25, 2002) (Am. Compl. ¶ 23).*fn2 This invention placed "biological vaccines (antigens) or pharmaceuticals" directly onto the muzzle of an animal using "liquid or emulsion paint, spray, paste, mist, roll-on, or biofilm." Specification of Claims at 7, U.S. Patent App. No. 10/084,592 (Def.'s Exh. L). The animal would then instinctively clean its nose with its tongue, thereby depositing the medicant into the "nasal and/or oral mucosa." Id. at 7. This system was designed to replace needles as the method for delivery of vaccines which, in turn, "minimizes the need for human contact between the human operator and the animal" and reduces the tissue and hide damage associated with injections. Id. at 3, 7.
On December 5, 2001, plaintiffs retained the law firm of Lipton, Weinberger & Husick to assist them in obtaining patents on both inventions. Under the terms of the retention, the firm agreed to advise plaintiffs with respect to the acquisition, protection, licensing and exploitation of the two inventions. The firm assigned Husick to perform the work. For the sake of clarity, I will discuss separately the circumstances surrounding each of the patent applications.
I. Livestock Identification Patent Application
On January 23, 2002, Husick filed a provisional U.S. Patent Application*fn3 for the livestock identification invention. Husick failed, however, to include the necessary $5.00 filing fee. On February 25, 2002, the USPTO mailed him a Notice of Missing Parts of Provisional Application which instructed him to pay the filing fee. Husick never paid the $5.00 filing fee. Consequently, on July 9, 2003, the USPTO mailed him a notice of abandonment. He never made any attempt to revive that application because "[his] client had repeatedly failed to provide instructions to enter the national stage despite repeated notices and [his] client never requested to revive the case or attempt to revive it." Husick Dep. 106:13-17 (Sep. 25, 2008).
During the time period between the retention of the law firm and the abandonment of the livestock identification invention patent application Husick and plaintiffs exchanged several emails*fn4 and phone calls. On October 18, 2002, plaintiff Van Der Kamp emailed Husick to inform him that "we believe that we are nearly at a point of converting this provisional patent to a utility status. What are the necessary steps to do this?" Husick responded several days later with the details of how to file a non-provisional application citing the provisional application as "priority matter." He suggested that they "revise the application to include [their] present knowledge of the invention, and then file the case, either as just a US application, or under the Patent Cooperation Treaty*fn5 to protect the invention here or overseas." On October 26, 2002, Van Der Kamp instructed Husick to file a U.S. application for a non-provisional patent. On December 31, 2002, Van Der Kamp sent another email to Husick seeking confirmation that "a utility patent application has been filed." Husick responded that he could not confirm the filing until his paralegal returned on January 2, 2003. Husick never filed an non-provisional application for a utility patent on the livestock identification invention. On January 23, 2003, Husick did, however, file an application for a patent under the Patent Cooperation Treaty but that application claimed priority for an incorrect provisional patent.
II. On Muzzle Patent Application
On February 25, 2002, Husick filed a non-provisional U.S. patent application for the on muzzle invention. Husick did not pay the filing fee and did not file the necessary declarations. Consequently, on April 18, 2002 the USPTO sent a Notice of Missing Parts. That Notice advised him that the application would be deemed abandoned if he did not correct the deficiencies within two months. Because Husick did not respond to the notice of missing parts, on November 26, 2003, the USPTO mailed him a Notice of Abandonment of the on muzzle patent application. He has admitted to receiving the notice, but claims that he filed a petition requesting that the notice of abandonment be withdrawn. The on muzzle application's file wrapper*fn6 includes no documentation of such a petition.
In 2003, plaintiff Cravens sent several emails to Husick inquiring into the status of the on muzzle patent application that had been filed on February 25, 2002. On December 15, 2003, Husick responded via email:
[a]fter you prompted me, I sent in a status request. Last week, without explanation from the PTO, I got back a notice that the application had been abandoned! Needless to say, I am hard at work tracking down the bonehead who made my request into an abandonment (no doubt, a wrong key pressed by a minimum wage worker) and will have the case back on track shortly. (This is nothing to worry about, and will delay processing in the case only slightly, if at all). I will keep you posted about your government in action!
In the notice of abandonment mailed to Husick on November 26, 2003, the USPTO stated the reason for abandonment was that no reply had been received. USPTO, Notice of Abandonment [of livestock identification invention patent application] Under 37 CFR 1.53(f) or (g) (Nov. 26, 2003).
III. Events Pertaining to Both Patent Applications
On April 15, 2004, Van Der Kamp sent another email to Husick inquiring into the status of both patents and expressing concern that it had been more than two years since the applications were filed and there had been no official word on any progress. On May 11, 2004, having received no response from Husick, Van Der Kamp re-sent the same email. This time, Husick responded: "[b]oth in queue at PTO, but given that the time to first official action is now sometimes >20 months, I am not concerned." In September 2004, plaintiffs again checked in with Husick regarding the status of their patent applications. They were told "[t]he PTO keeps slipping times to examine patents, so as they say in the government game, 'No News [sic] is just no news.' We will let you know the MOMENT anything does come our way."
On May 1, 2005, in preparation for an impending board meeting, Cravens again asked Husick via email for an update on the patents. In that email Cravens indicated that he had tried to check the status of the patents on the USPTO's website and had received a message stating: "[s]orry, the entered application number '10/084592' is not available. The number may have been incorrectly typed, or assigned to an application that is not yet available for public inspection." Having received no response, Cravens again emailed Husick to plead for information. Husick responded: "I will check with the PTO, but at this time, your application is just outside the average times now prevalent in the Patent Office... so you should not be worried."
On July 20, 2005, plaintiffs hired another lawyer, Lara S. Dickey,*fn7 to represent them with regard to their patent applications. The next day, Dickey wrote to Husick requesting that the files regarding the two patents be transferred to her firm. Dickey followed up with several phone calls until, on September 16, 2005, she received assurances from Judith King, Husick's administrative assistant, that the files would be transferred within several days. On September 20, 2005, Dickey received a letter from Husick's law firm stating that the entire file pertaining to the livestock identification invention had been destroyed pursuant to the client's instructions. The only document she received regarding the livestock identification invention was the PCT application filed by Husick on January 23, 2003. That letter made no reference to the on muzzle file. Between September 20, 2005 and October 24, 2005, Dickey sought further explanation from Husick and his firm for the missing documents. She received no response. On October 7, 2005, she filed new powers of attorney with the USPTO with regard to the on muzzle application. Upon receiving notice on October 24, 2005 that the USPTO had accepted her powers of attorney, she inquired into the status of the application and found that it had been abandoned as of June 19, 2002. At that time, it was not clear to Dickey whether a petition to revive the application had been filed. Between October 24, 2005 and November 3, 2005, Dickey continued to request information from Husick. During that time-frame, she spoke to King who told her that the on muzzle application did not exist. King allegedly did promise to look into the matter further and provide Dickey with a copy of the client's instructions to destroy the provisional application. Despite a letter and several phone calls directed to Husick between November 3, 2005 and April 25, 2006, Dickey received no further response. On January 6, 2006, she ordered a complete file wrapper of the on muzzle application. That file wrapper was not available electronically at the time. Upon receipt of the file wrapper, she discovered that no attempt had been made to revive either of the applications. Dickey claims that only after receiving the file wrapper did she suspect that Husick's mismanagement of the patent applications--and not some reasonable and innocent explanation--was the cause of the abandonment. She further alleges that Husick's unresponsiveness to her requests for the files was a deliberate attempt to conceal his actions.
On March 12, 2007, Dickey filed a petition with the USPTO to revive both patent applications for either unavoidable delay or unintentional delay. USPTO, Decision on Petition for Revival Under 37 CFR 1.137(a) and 37 CFR 1.137(b) (Dec. 18, 2007). With regard to the livestock identification application, the petition was dismissed without prejudice for failure to include appropriate documentation. Id. On February 18, 2008, Dickey renewed that petition and included the appropriate documentation. On April 9, 2008, the renewed petition to revive for unintentional abandonment was granted. USPTO, Decision on Petition for Revival Under 37 CFR 1.137(a) and 37 CFR 1.137(b) (Apr. 9, 2008). Since the revival of the livestock identification patent application was granted, there have been several USPTO actions. Most recently, on May 22, 2009, the USPTO issued a non-final rejection of that application on various grounds.
On May 9, 2008, the on muzzle application was revived on the grounds of unintentional abandonment. That application has also been the subject of several USPTO actions including a final rejection, an amendment and response by Dickey and an advisory action by the USPTO rejecting the new and amended claims.
Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment is proper "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." An issue of material fact is genuine if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Summary judgment will be granted "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). The party moving for summary judgment has the burden of demonstrating that there are no ...