E-Pass Technologies, Inc. v. Moses & Singer, LLP: Legal Malpractice Case Based on Filing of Unmeritorious Claim for Patent Infringement Not Subject to Exclusive Federal Jurisdiction


Legal malpractice defense attorneys often prefer to defend malpractice cases in federal court rather than state court. Reasons for this vary, but federal judges sometimes are perceived to be more willing than state court judges to grant dispositive motions, and are sometimes perceived to be more strict in their case management. For defense attorneys who think it would be advantageous to defend a case in federal court, the issue of subject matter jurisdiction should be considered promptly.

Diversity jurisdiction is the most common ground for removing a legal malpractice case to District Court. The other ground for removing a case–federal question jurisdiction–arises in malpractice cases involving the alleged mishandling of patent-related matters.

District courts have original jurisdiction over claims “arising under” federal laws relating to patents, copyrights and trademarks. 28 USC § 1338. This raises the question of whether a legal malpractice claim based on patent malpractice arises under federal law. Under Supreme Court case law, section 1338 jurisdiction extends to any case in which the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law.

In 2007, the United States Court of Appeals for the Federal Circuit (which hears appeals from any of the United States district courts where the original action included a complaint arising under the patent laws) issued two rulings addressing this issue. In Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir. 2007), the court held that where a plaintiff must prove, as part of its case-within-a-case presentation, infringement stemming from alleged mishandling of patent prosecution or patent litigation, there is federal question jurisdiction under 28 U.S.C. § 1338. In Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed Cir. 2007), the court similarly held that federal jurisdiction exists where a determination of claim scope is a necessary element of a patent malpractice claim. Both of these cases were appeals from the U.S. District Court from the Western District of Texas. Since the issuance of these decisions, courts have been wrestling with the issue of when it is that a state-law legal malpractice claim involving a patent issue “arises under” federal patent laws.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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