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U S Supreme Court Holds That Legal Malpractice Cases Arising From Patent Disputes Belong In State Court

James A. Jablonski

The U.S. Supreme Court granted a Petition for Certiorari I filed on behalf of Steven Byrne, arguing that his legal malpractice case should have remained in a Kentucky Circuit Court. We have long maintained that these cases are primarily state tort matters and not within the federal patent jurisdiction.

It is our experience that state courts are more likely to focus on the mistakes made that harmed the inventor rather than the details of patent infringement litigation. The Petition was filed as a companion to Gunn v. Minton, a Texas case. After being returned to Kenton County Circuit Court, the case was resolved to Byrne’s satisfaction.

INVENTOR OF LIGHT PREVAILS IN SUIT LOST PATENT PROTECTION COSTS LAWYERS $7 MILLION

Author: John Accola
News Staff Writer
Edition: Final
Section: Business
Page: 1B
Rocky Mountain News (CO)
December 9, 1999

A Longmont inventor has won a $7 million malpractice suit against a Denver law firm that failed to obtain patent protection for a design that led to Black & Decker's wildly successful SnakeLight.

Ron Krenzel won his 2-year-old case against the patent law firm of Klass, Law, O'Meara Friday following a three-week jury trial in Denver District Court.

Attorneys William O'Meara and Joe Kelly, named as individual defendants in the suit, could not be reached for comment Thursday.

Krenzel's attorney, James Jablonski, said the jury determined an inadequate patent application for a flexible, coiled flashlight handle invented by Krenzel cost his client $10 million in lost royalties since 1994. That was the year Black & Decker introduced its $30 SnakeLight, which incorporated a similar handle that could be wrapped around objects. It was the most successful product introduction in the company's history.

Although the jury found the law firm's attorneys were mostly at fault, they also blamed Krenzel for 30 percent of the patent foul-up, and a judge reduced the award to $7 million.

``The defendants argued there had been a lack of communications, that it was the plaintiffs' fault, and the jury accepted that to some extent,'' said Jablonski, a partner at the Denver law firm Gorsuch Kirgis.

According to his suit, Krenzel became aware of the problem when he saw an advertisement for the SnakeLight and was told by the Klaas law firm's attorneys that the patent filed was too narrow to protect his invention from infringement.

Krenzel developed the handle in 1992. But Klaas's attorneys filed a patent covering the structural aspects of the invention, rather than a ``method claim'' that would have protected the functional uses of the device.

Krenzel's invention, called Lite Fantastic, had a flexible pipe-like handle that could grip a flashlight and also be set up as a free-standing holder on the floor. The SnakeLight uses an all-in-one design, with a flashlight and battery pack attached to a coiled handle.

Black & Decker racked up more than $300 million in SnakeLight sales in 1994 and 1995. The product was so popular during Christmas and Fathers Day promotions that many retailers couldn't keep them in stock. Entertainer David Letterman even joked about buying his mother one for Christmas.

Jablonski, however, says his 55-year-old client has been unable to collect any royalties from Black & Decker.

That's expected to change in the near future, Jablonski said. Last month, a second Denver patent law firm, Sheridan Ross, was able to obtain an amended filing broadening Krenzel's patent rights.

``It took a long time to get this fixed,'' said Jablonski, ``But we certainly hope Black & Decker and Mr. Krenzel will be able to enter into a licensing agreement.''

Copyright (c) 1999 Rocky Mountain News
Record Number: 9912100010

Full Draw Productions v. Easton Sports, Archery Manufacturers and Merchants Association et al

United States District Court-Colorado

Full Draw Productions owned a very successful trade show catering to all aspects of the the archery and bow hunting business. A number of bigger exhibitors and the trade association decided to start their own show but also to boycott Full Draw’s show, which killed the show in two years. The boycott was established to be unlawful under the antitrust laws. In order to ultimately prevail, an appeal was taken to the US Tenth Circuit Court of Appeals which rendered a landmark decision that such a boycott by buyers of space is unlawful. Full Draw then obtained a settlement of more than $5 million altogether from the various boycotters.

Baby’s Benefit v. Spacelabs

United States District Court-Colorado

I represented, together with IP lawyer Carl Forest, a small company which had developed a software program for neonates. Spacelabs had incorporated the program in products but refused to acknowledge that use and pay royalties. After extensive discovery to establish the wrongful use ,a settlement of several million in cash and the return of valuable IP rights to Baby’s Benefit was achieved.

Particle Measuring Systems v. Rion Co. Ltd.

United States District Court-Colorado

This patent infringement suit was brought to enforce important patent rights owned by industry leader Particle Measuring against a Japanese competitor. The suit was brought not only to recover damages but to deter continuing infringement. After taking depositions at the U S Embassy in Tokyo, using an interpreter, a settlement was reached which met the client’s needs.

Roger Volberding v. Estate of Otto Volberding

Washington County District Court

Otto Volberding left an estate worth $2.5 million dollars and a will disinheriting his only child, Roger ,because of a disapproved marriage. I represented Roger in a trial which successfully established Roger was the sole beneficiary of a prior trust which was not revoked by the will and contained virtually all the assets purported to be transferred by will. As a result , Roger was able to retain the valuable family farm , where he had worked his entire life.

Stephen Jordan v. Thomas Lowe et al

Denver District Court

I represented Steve Jordan, who suffered catastrophic injury, including substantial paralysis, as a result of a medical diagnostic procedure. The suit was settled for periodic payments estimated to be $14 million to Steve, which helped him live with dignity for the remainder of his life.

Horton v. Leading Edge

We represented 440,000 consumers of a product advertised to change the male body in a way which it simply does not. We were able to achieve a withdrawal of false claims and a refund worth millions of dollars for all the consumers.

DISCOUNT CHAIN SUES NORTHGLENN MALL DISPUTE OVER LAND POSES THREAT TO REVITALIZATION

Author: MIKE PATTY
ROCKY MOUNTAIN NEWS STAFF WRITER
Edition: FINAL
Section: LOCAL
Page: 22
February 4, 1993

The effort to revitalize the Northglenn Mall has been jeopardized at least temporarily by the apparent withdrawal of Shopko Stores Inc., a discount chain that had signed on as a third anchor last year.

Last week, attorneys for Shopko filed a suit in Denver U.S. District Court against the owners, Northglenn Mall Associates and its general partners, David Blum and Gerson I. Fox. Also named as a defendant in the suit was Chicago Title Co. of Colorado, which held a $2.48 million down payment toward the purchase price for 10 acres at the mall.

The suit alleges that the owners failed to resolve unspecified environmental problems affecting the land at the south end of the mall, where Shopko wanted to build its store. A purchase agreement signed in April 1992 set definite time limits to solve those problems, and those were not met, according to the suit.

Chicago Title Co. was included as a defendant because it has failed to return the $2.48 million to Shopko in violation of the purchase agreement, the suit alleges.

James Jablonski, an attorney for the Denver firm of Gorsuch, Kirgis, Campbell, Walker and Glover, which is representing Shopko, said the problem is contamination in the dirt on the property.

Shopko initially was worried about petroleum products in the ground but is now also worried about other contamination, Jablonski said. A battery and tire store formerly occupied the site.

"As you know, the purchaser of any real estate acquires whatever conditions exist and is responsible for them," Jablonski said. "Those matters have to be resolved before there is any purchase."

Jablonski said negotiations over Wisconsin-based Shopko locating at Northglenn Mall will continue. But, in the meantime, the company wants its money back.

The owners and the mall developer, Palisades Realty and Development Corp. of Maryland, declined comment.

"We have no comment other than we are moving foward in good faith," said Northglenn Mall manager Susan Sgrignoli.

Northglenn City Manager Jim Landeck said he hadn't seen the suit but remains hopeful of bringing Shopko to Northglenn.

Northglenn gets about 40% of its revenue from sales tax generated by the mall, which has fallen on hard times in recent years.

About $21 million has been raised for redevelopment, more than $9 million of it in tax-increment financing bonds issued by Northglenn. The rest of the money was raised by Palisades, selected by the Northglenn Urban Renewal Authority to spearhead the revitalization effort.

NORTHGLENN MALL
* Northglenn gets about 40% of its revenue from sales tax generated by Northglenn Mall.

* Once one of the metro area's largest retail operations with five anchors, the mall began losing tenants and customers during the late 1980s.

* By 1988, The Denver, May D&F and J.C. Penney had withdrawn from the mall, leaving Sears and Mervyn's as anchors.

* Sales tax paid to Northglenn dropped from about $3 million in 1986 to $2 million in 1991. LIB3 LIB5 Caption: Northglenn Mall, once one of the area's largest retail operations, has lost tenants and customers. By George Kochaniec Jr. / Rocky Mountain News. FILE: NORTHGLENN MALLPHOTO

Memo: NORTH METRO SUBURBS PAGE SEE END OF TEXT FOR INFOBOX Copyright (c)
1993 Rocky Mountain News
Record Number: 9301060752