In a pair of malpractice cases, the U.S. Court of Appeals for the Federal Circuit expanded federal court jurisdiction over state law malpractice claims. Air Measurement Technologies Inc. v. Akin Gump Strauss Hauer and Feld LLP, Case No.07-1035 (Fed. Cir., Oct. 15, 2007) (Michel, C.J.); Immunocept v. Fulbright & Jaworski LLP, Case No. 06-1432 (Fed. Cir., Oct. 15, 2007) (Michel, C.J.).

Both decisions conclude that federal courts hold exclusive jurisdiction over cases involving state law malpractice claims that require resolution of a "substantial question of federal patent law" such as infringement, validity, enforceability or patent claim scope. This general concept is not new, rather, these case incrementally expand the type of patent malpractice claims that require federal court decision-making. The issue is whether the particular form of malpractice asserted requires a determination of a substantial question of federal patent law.

Air Measurement(AMT) had filed six infringement suits and settled them for a total of $10 million. After settlement, AMT sued its patent attorneys for malpractice, asserting that it would have collected more but for alleged attorney errors including filing after an on sale bar date, failing to submit two prior art references and failing to properly inform AMT of the mistakes. The malpractice case was subsequently removed to federal court. The attorneys filed an interlocutory motion to remand the action back to the state court on the ground that the federal district court lacked jurisdiction under 28 U.S.C. § 1338. The motion was denied. The Federal Circuit affirmed holding that patent infringement is a necessary element of AMT’s malpractice claim requires a determination of potential patent infringement and "federal resolution of the issue was intended by Congress." Thus, jurisdiction "arises under" under § 1338.

In Immunocept, the patent holder attempted to license its patents to Johnson & Johnson (J&J) in 2002. However, J&J’s attorneys found that the patent was narrowly drafted (because of its use of "consisting of" claim language) and refused to take a license. In 2005, Immunocept sued Fulbright & Jaworski for malpractice under Texas law in the U.S. District Court for the Western District of Texas. The district court granted summary judgment for Fulbright; Immunocept appealed. The Federal Circuit agreed that federal courts hold exclusive jurisdiction over this case because it requires a determination of patent claim scope—a substantial patent law question. According to the Court, "[b]ecause patent claim scope defines the scope of patent protection, we surely consider claim scope to be a substantial question of patent law." After finding jurisdiction, however, the Court affirmed the lower court’s finding that the claim was barred by a Texas two-year statute of limitations.

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