federal jurisdiction in legal malpractice lawsuits
alleging only state law causes of action. Lacking diversity or federal causes of action, juris-
diction was instead based on allegations in both actions that attorneys had committed mal-
practice in underlying patent matters. The Federal Circuit held that the presence of patent
issues in a legal malpractice claim can create federal jurisdiction. As explored in this article,
these cases open new avenues for jurisdictional analysis in legal malpractice litigation
involving underlying federal issues.
Air Measurement Tech. v. Akin Gump Strauss Hauer, 504 F.3d 1262 (Fed. Cir. 2007) was
a legal malpractice case alleging errors by counsel in both patent prosecution and patent
litigation. Air Measurement, 504 F.3d at 1265. Plaintiffs in Air Measurement had retained
counsel to secure patent protection for a product and to prosecute litigation against alleged
infringers. Id. at 1265-66. Plaintiffs alleged that errors committed by their lawyers led to
settlement of the infringement lawsuits for far less than their real value. Id.
at 1266.
Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. 2007) involved
allegations of negligence by counsel in securing patent protection for plaintiffs technology.
Immunocept, 504 F.3d at 1283. Plaintiffs alleged that the patent drafted by their counsel
contained a fatal flaw rendering it inadequate to protect against competing products. Id.
Plaintiffs alleged that this flaw rendered the patent useless and crippled the value of the
underlying technology. Id.
In both Air Measurement and Immunocept, federal jurisdiction was premised entirely
on 28 U.S.C. §1338(a), which provides district courts with exclusive jurisdiction over patent
cases. See Immunocept, 504 F.3d at 1284; Air Measurement, 504 F.3d at 1266. And because
Professional Liability
Committee Newsletter
September 2008
Buddy, Can You Spare a Federal Issue?
Federal Jurisdiction in Certain Legal Malpractice Claims
BY FIELDS ALEXANDER
BECK, REDDEN & SECREST, L.L.P.




jurisdiction was premised on patent issues, appellate jurisdiction rested with the Federal
Circuit. See 28 U.S.C. § 1295(a)(1).
Air Measurement and Immunocept took quite different procedural paths on their way to
the Federal Circuit. Air Measurement was filed in state court and then removed by the
defendants to the Western District of Texas. Air Measurement at 1266. Plaintiffs motion
to remand was denied. Id. Three years later, defendants challenged the propriety of their
own removal and sought remand because of a lack of subject matter jurisdiction. Id. at
1267. The trial court denied that motion as well, but certified for interlocutory appeal the
issue of whether a state law malpractice claim arising out of underlying patent prosecution
and litigation is subject to federal subject matter jurisdiction. Id.
Immunocept was originally filed in federal court, with plaintiffs asserting §1338 jurisdic-
tion from the outset. Immunocept at 1283-84. Defendants never challenged jurisdiction.
Prior to trial, the district court granted summary judgment for the defense. Id. at 1284. On
appeal, with neither side contesting jurisdiction, the Federal Circuit sua sponte ordered the
parties to brief the jurisdictional issue. Id.
In both Air Measurement and Immunocept, plaintiffs asserted only legal malpractice and
related state law claims. Immunocept at 1283; Air Measurement at 1266. And in both cases,
the Federal Circuit found that plaintiffs state law tort claims were subject to exclusive fed-
eral jurisdiction. The court noted that whether a federal court could exercise jurisdiction
over legal malpractice litigation with underlying patent issues was an issue of first
impression. Air Measurement at 1267. As stated above, the court based jurisdiction on §
1338, which vests federal courts with jurisdiction over civil actions arising under federal
laws related to patents, plant variety protection, copyrights and trademarks. 28 U.S.C. §
1338. In both cases, the court held plaintiffs claims arose under federal patent law
because patent issues were a necessary component of plaintiffs claims. Air Measurement at
1265; Immunocept at 1283.
The Federal Circuit held that federal jurisdiction exists in any case in which:
(1)
the well-pleaded complaint establishes that federal
patent law creates the cause of action; or
(2)
plaintiff s right to relief necessarily depends on resolu-
tion of a substantial question of federal patent law, in
that patent law is a necessary element of one of the well-
pleaded claims.
Air Measurement at 1267-68 (citing Christianson v. Colt Indus. Operating Corp., 486 U.S.
800, 809 (1988)).
Professional Liability Committee Newsletter
September 2008 Because legal malpractice claims
are not created by federal patent law, the
question in both Air Measurement and
Immunocept was whether plaintiffs state
law claims necessarily depended upon the
resolution of a substantial question of
patent law. The court concluded that they
did, finding federal jurisdiction because
resolution of patent issues was a necessary
element of plaintiffs claims. Air
Measurement at 1268-69; Immunocept at
1285.
In Immunocept, the Federal Circuit
noted that plaintiffs could not prevail
without obtaining favorable rulings on
disputed issues of patent law. The core
liability issue in Immunocept was whether
a drafting mistake had been made in
connection with the patent at issue.
Immunocept at 1285. Plaintiffs asserted
their patent counsel used unnecessarily
restrictive language and consequently cre-
ated a patent inadequate to protect against
infringing products. Id. Thus, the court
noted that there is no way Immunocept
can prevail without addressing claim
scope. Id. If the patent in fact provided
adequate protection, plaintiffs did not have
a viable malpractice claim. Thus, issues of
claim construction were at the core of
plaintiffs claims. And because plaintiffs
claims depended upon a determination of
the scope of the patent, the Federal Circuit found jurisdiction. Id.
In Air Measurement, the alleged malpractice concerned both patent prosecution and
patent litigation. Plaintiffs asserted that errors by their counsel forced them to settle their
infringement lawsuits for diminished value. Id. In finding jurisdiction, the Federal Circuit
Professional Liability Committee Newsletter
September 2008
ABOUT THE COMMITTEE
The IADCs Professional Liability Committee
consists of lawyers who represent professionals
in matters arising from their provision of
professional services to their clients. Such
professionals include, but are not limited to,
lawyers, accountants, corporate directors and
officers, insurance brokers and agents, real estate
brokers and agents and appraisers. The
Committee serves: (1) to update its members on
the latest developments in the law and in the
insurance industry; (2) publish newsletters and
Journal articles regarding professional liability
matters; and (3) present educational seminars to
the IADC membership at large, the committee
membership and the insurance industry.
Learn more about the Committee at:
www.iadclaw.org/comm.cfm?comm=prof
The Co-Vice Chairs of the
Professional Liability
Committee Newsletter
are:
Michael E. Brown
Kightlinger & Gray, LLP
Indianapolis, IN
Phone: 317.968.8119
E-mail: mbrown@k-glaw.com
Michael D. Crim
McNeer, Highland, McMunn and
Varner, LC
Clarksburg, WV
Phone: 304.626.1104
E-mail: mdcrim@wvlawyers..com noted that plaintiffs in malpractice lawsuits are required under Texas law to establish that
they would have prevailed in the underlying litigation but for their counsels negligence. Air
Measurement
at 1268-69. This is known as the case within a case doctrine, and it is a part
of plaintiff s burden of establishing proximate cause. Id. at 1269.
The Federal Circuit noted that because of plaintiffs proximate cause burden, they could
not prevail without an adjudication of the merits of the underlying infringement claims. Id.
That is, plaintiffs must show they would have won the infringement actions but for their
lawyers negligence:
Because proof of patent infringement is necessary to show
AMT would have prevailed in the prior litigation, patent
infringement is a necessary element of AMTs malpractice
claim and therefore apparently presents a substantial question
of patent law conferring § 1338 jurisdiction.
Id. (citing Christianson, 468 U.S. at 809).
One of the arguments employed by the Federal Circuit to justify the exercise of
federal jurisdiction was that federal courts are best equipped to resolve the complicated
issues of patent law that would arise in these types of malpractice cases:
Claim scope determination is a question of law that can be
complex in that it may involve many claim construction doc-
trines. Litigants will benefit from federal judges who are used
to handling these complicated rules.
Immunocept at 1285 (citing Grable & Sons Metal Prods., Inc. v. Darue Engg & Mfg., 545 U.S.
308, 315 (2005)). The Federal Circuit also noted in Air Measurement that:
[t]here is a strong federal interest in the adjudication of patent
infringement claims in federal court because patents are issued
by a federal agency. The litigants will also benefit from federal
judges who have experience in claim construction and
infringement matters.
Air Measurement at 1272.
Professional Liability Committee Newsletter
September 2008