Hamilton and one of the law firms settled with AMT. AMT contended that Akin Gump’s errors forced AMT to settle the prior litigation with SCBA manufacturers below fair market value because the defendants were able to raise defenses such as invalidity and unenforceability due to Hamilton’s errors. Akin Gump removed the case to federal court pursuant to 28 U.S.C. § 1338, arguing that resolution of the suit required resolution of a substantial question of patent law. The district court denied AMT’s subsequent motion to remand, concluding that, in order to prevail, AMT would need to establish the success of its infringement claims and that Hamilton’s negligence afforded the defendants certain defenses under patent law.

Federal Jurisdiction Proper in a State Law Malpractice Action Where Patent Infringement Is a “Necessary Element” of the State Law Claim 10-1091 January 11, 2011 Freeman, Jeffrey A. Decision Last Month at the Federal Circuit - February 2011Judges: Newman, Bryson (author), Prost [Appealed from: E.D. Mich., Judge Rosen] In Warrior Sports, Inc. v. Dickinson Wright, P.L.L.C., No. 10-1091 (Fed. Cir. Jan. 11, 2011), the Federal Circuit held that at least one of Warrior Sports, Inc.’s (“Warrior”) malpractice claims against the law firm of Dickinson Wright, P.L.L.C. (“Dickinson”) required the district court to resolve a substantive issue of patent law, thus conferring the district court with subject matter jurisdiction under 28 U.S.C. § 1338. Warrior had previously asserted U.S. Patent No. RE 38,216 (“the ’216 patent”) in a lawsuit against one of its competitors, STX, L.L.C. (“STX”).

District Court Lacks Discretion to Remand Claims Arising Under Federal Patent Law to State Court 06-1522 March 31, 2010 Decision Last Month at the Federal Circuit - May 2010Judges: Michel, Gajarsa (author), Holderman (Chief District Judge sitting by designation) [Appealed from: C.D. Cal., Judge Pregerson] In HIF Bio, Inc. v. Yung Shin Pharmaceuticals Industrial Co., No. 06-1522 (Fed. Cir. Mar. 31, 2010), the Federal Circuit held that the district court abused its discretion in remanding the amended complaint filed by HIF Bio, Inc. (“HIF”) to California state court because two of the asserted causes of action arose under 28 U.S.C. § 1338(a). Although it found that the district court had jurisdiction over those causes of action, the Federal Circuit held that the district court could not provide a remedy for those causes of action under federal patent law, and that it therefore should have dismissed those causes of action for failure to state a claim upon which relief can be granted.

Metabolite appealed to the Federal Circuit. Addressing jurisdiction under 28 U.S.C. § 1295(a)(1), the Federal Circuit noted that it has exclusive jurisdiction over an appeal from a final decision of a district court whose jurisdiction was based at least in part on 28 U.S.C. § 1338, which confers district courts with original jurisdiction over “any civil action arising under any Act of Congress relating to patents.” Citing Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 808-09 (1988), the Court noted that jurisdiction under § 1338 is extended when a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of patent law, in that patent law is a necessary element of one of the well-pleaded claims.

13 At the heart of the disagreement were two issues.The first issue was whether or not the Supreme Court’s decision in Gunn v. Minton14 remained relevant to an analysis of the Federal Circuit’s jurisdiction over standalone Walker Process claims.15 Gunn involved the interpretation of 28 U.S.C. § 1338, which confers jurisdiction to the district courts over cases that involve statutes relating to patents. In Gunn, the Supreme Court held that a malpractice case involving a patent attorney did not “arise under” the federal patent laws pursuant to § 133816 — even though the case involved resolution of a patent law issue.

11th Circuit Opinion On these facts, the 11th Circuit recognized controlling statutory authority that “the Federal Circuit [has] exclusive jurisdiction ‘of an appeal from a final decision of a district court of the United States . . . if the jurisdiction of that court was based in whole or in part, on section 1338.” The 11th Circuit further acknowledged that 28 U.S.C. § 1338 “grants federal district courts original jurisdiction ‘of any civil action arising under any Act of Congress related to patents.’” The 11th Circuit then went on to hold that the District Court did not have “patent jurisdiction,” but only diversity jurisdiction under 28 U.S.C. § 1332 and supplemental jurisdiction under 28 U.S.C. § 1367.

Federal Subject Matter Jurisdiction Under 28 U.S.C. § 1338 Requires a “Substantial” Issue of Patent Law 12-1686 May 16, 2013 Decision Last Month at the Federal Circuit - June 2013Judges: Newman, Bryson, Dyk (author) [Appealed from: D.N.H., Judge Laplante] In Forrester Environmental Services, Inc. v. Wheelabrator Technologies, Inc., No. 12-1686 (Fed. Cir. May 16, 2013), the Federal Circuit vacated and remanded the district court’s grant of SJ on tort law claims involving questions of patent law, because the district court lacked subject matter jurisdiction under 28 U.S.C. § 1338. Forrester Environmental Services, Inc. and Keith E. Forrester (collectively “Forrester”) and Wheelabrator Technologies, Inc. (“Wheelabrator”) are competitors in the market for phosphate-based treatment systems for stabilizing heavy metals in municipal and industrial waste, with each owning patents on their respective treatment systems.

The defendant’s attorneys filed a motion for summary judgment arguing that the lease of the system was not for an experimental use and that Minton’s patent infringement claims would have failed even if the experimental use argument had been timely raised. The trial court agreed and granted summary judgment in favor of the attorneys.On appeal, Minton raised the new argument that because his legal malpractice claim was based on an alleged error in a patent case, it “arises under” federal patent law for purposes of 28 U.S.C. §1338(a). He also argued that the Texas state court lacked subject matter jurisdiction to decide the case because under §1338(a), no state court shall have jurisdiction over any claim for relief arising under any act of congress relating to patents.

O Releases Final Rules to Implement the First to File Provisions of the AIA and New Fee ScheduleTrademarks Second Circuit Affirms Willful Infringement of Fendi’s TrademarkCopyrightsMattel v. MGA Entertainment—The BRATZ Saga Continues Use of Candid Photo in Poster Not InfringingTrade Secrets Adverse Inference Based on Destruction of Computer Evidence Exclusive License Not Required for Standing to Claim Misappropriation of a Trade Secret Involving Subway Car BrakesPatents / Federal Circuit JurisdictionSupreme Court: State Court Has Jurisdiction over a Legal Malpractice Claim by Christopher M. Koepke and Paul Devinsky The U.S. Supreme Court determined that a state court had jurisdiction over a legal malpractice claim, even though resolving the claim required the state court to address an issue of federal patent law. Gunn v. Minton, Case No. 11-1118, Feb. 20, 2013 (Roberts, C. J.). In a unanimous decision the Supreme Court held that 28 U.S.C. §1338(a) did not deprive a state court of subject matter jurisdiction over a legal malpractice claim that required the resolution of an issue of federal patent law. Under §1338(a), “[n]o State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents.” However, the Supreme Court concluded state legal malpractice claims will seldom, if ever, arise under federal patent law for the purposes of assessing jurisdiction under §1338(a). According to the Court, such claims are unlikely to have sufficient significance to the federal system to give the federal courts exclusive jurisdiction. Minton brought a lawsuit in Texas state court alleging that his patent practitioner and the other petitioners committed legal malpractice in a case in which Minton had developed a computer program and telecommunications network designed to facilitate securities trading and then leased it to a securities brokerage. According to Minton, the failure of his attor

Federal Circuit Considers Transferred Patent-Related State Law Malpractice Case, but Questions Balance Between Federal and State Judicial Responsibilities 11-1525 April 17, 2012 Decision Last Month at the Federal Circuit - May 2012Judges: Prost (concurring), Mayer, O'Malley (concurring) (per curiam) [Appealed from: W.D. Tex., Chief Judge Biery] In USPPS, Ltd. v. Avery Dennison Corp., No. 11-1525 (Fed. Cir. Apr. 17, 2012), the Federal Circuit affirmed the district court’s decision to dismiss a claim for breach of fiduciary duty and fraud, holding that the Court had jurisdiction pursuant to 28 U.S.C. § 1338 and that USPPS, Ltd.’s (“USPPS”) complaint was untimely. In 1999, Joe Pat Beasley filed a patent application for personalized postage stamps.