Emerging Fissures in Exercising Federal Jurisdiction Over Patent Legal Malpractice Cases

Over four years have elapsed since the Federal Circuit first held that federal courts possess exclusive jurisdiction over patent legal malpractice claims.  In Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. 2007), the court ruled that patent claim scope issues alleged in patent legal malpractice claim raise substantial federal issues.  Similarly, in Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir. 2007), the same Federal Circuit panel ruled that patent litigation malpractice allegations also raise substantial federal issues.

Alleged errors in patent prosecution and patent litigation both raise substantial federal issues because the “case-within-a-case” analytical structure of a legal malpractice claim generally requires an underlying analysis of patent law standards, proximate causation issues, and patent damages calculations.  In other words, the legal malpractice allegations cannot be determined without an analysis of the merits of the underlying patent right at issue.

The reasoning of the Immunocept/Air Measurement cases is increasingly under attack.  Even a Federal Circuit panel recently stated that “we believe this court should re-evaluate the question of whether federal jurisdiction exists to entertain a state law malpractice claim involving the validity of a hypothetical patent . . . .”  Byrne v. Wood, Herron & Evans, et al., 2011 WL 5600640 (Fed. Cir. 2011)(non-precedential decision).  Predictably, the losing appellant requested a rehearing of this case en banc.  That request is pending.

Please see full article below for more information.

LOADING PDF: If there are any problems, click here to download the file.

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.

© Lane Powell PC - Intellectual Property Law Blog | Attorney Advertising

Written by:


Lane Powell PC - Intellectual Property Law Blog on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.