Hot Topics for Trial Lawyers
A compilation of journalistic articles to keep you abreast of changing developments and current events in the litigation realm. If you are interested in writing for this Hot Topics segment, email tnuckols@texasbar.com
Patent Infringement
Posted 5/22/08 John T. Wilson IV and David E. Keltner, Kelly Hart & HallmanAir Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir. Oct. 15, 2007)
Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. Oct. 15, 2007).
These two companion opinions involve federal subject matter jurisdiction questions raised in legal malpractice suits where the underlying representation involved patent infringement litigation. Both cases presented the issue of whether the federal courts had “arising under” jurisdiction over the state-law malpractice claims under Section 1338(a) ("The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.").
Akin Gump involved legal malpractice claims stemming from patent infringement litigation which was settled. The Court explained that the legal malpractice claims presented a “case within a case” scenario because to prevail in the malpractice suit, the plaintiff must demonstrate that he would have prevailed in the underlying litigation. The Court then reasoned that because the underlying suit was a patent infringement action, the district court would have to adjudicate the merits of the infringement claim. Because proof of patent infringement was necessary to show the party would have prevailed in the prior litigation, it was a “necessary element” of the legal malpractice claim, and therefore presents a substantial question of patent law conferring Section 1338 jurisdiction. The Court wrote that it would consider it illogical for the district court to have exclusive jurisdiction under Section 1338 to hear the underlying infringement suit and for the Court then to determine that the same court does not have the same jurisdiction under Section 1338 to hear the same substantial patent question in the state malpractice claim.
In Immunocept, the Court considered the jurisdiction issue sua sponte, reasoning that because the malpractice claim turned on the attorney’s drafting of the scope of the patent, the malpractice claim involved a substantial question of patent law. The Court wrote, “[a]s a determination of patent infringement serves as the basis of Section 1338 jurisdiction over related state law claims, so does a determination of claim scope. After all, claim scope determination is the first step of a patent infringement analysis.” Immunocept, 504 F.3d at 1285.
Both opinions were issued by the three-judge panel of Michel, Lourie, and Rader. Akin Gump has moved for En Banc reconsideration of the Court¡¦s decision. Akin Gump argues that the Court¡¦s opinion conflicts with U.S. Supreme Court precedent, Grable & Sons Metal Products, Inc. v. Darue Engineering & Manufacturing, 545 U.S. 308 (2005) and Empire Healthchoice Assurance, Inc. v. McVeigh, 126 S. Ct. 2121 (2006). It is further likely that this issue will be presented to the U.S. Supreme Court.