The Order Dismissing for Lack of Subject Matter Jurisdiction the Texas Conflicts Case

I stumbled across this order dismissing, for lack of subject matter jurisdiction, the claim against Baker Botts, which is now being tried in Texas state court.  (Hat tip to the ND Tex. blog.)   The judge, I think correctly, held that there was no subject matter jurisdiction over a conflict of interest claim arising during patent prosecution.  It is interesting because it gives some more detail about the alleged wrong-doing.

There’s an unaddressed choice of law issue lurking here, which, I assume, the parties have since addressed!  (Most courts and ethical rules recognize that a lawyer should be subject to one set of rules at a particular time; usually, if a matter is before a tribunal, the tribunal’s rules apply.)

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

3 thoughts on “The Order Dismissing for Lack of Subject Matter Jurisdiction the Texas Conflicts Case

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    Sure: almost every state I’ve dealt with says, basically, this: “there is no cause of action for violating a disciplinary rule; instead there must be proof of a violation of the standard of care (or of a fiduciary duty). HOWEVER, breach of an applicable rule is evidence of breach of the duty….”

    Welcome to my world: it happens, a lot, that rules don’t require the same things. For example, the PTO’s new rules have different requirements for dividing fees than many states. Which does the lawyer have to follow? I’d say only the PTO rules if the division concerned a matter pending before the PTO. (This can be outcome determinative — the PTO, for example, lets lawyers split fees if EITHER the division is proportional OR the lawyers each have responsibility. In some states it is both!

    And it gets even more fun: some states don’t bar enforcement of a contract that violates the disciplinary rules, while some do… So this choice of law issue has cost a lot of people money. There’s a great case, Daynard v. some firm, where a plaintiffs’ tobacco firm tried to avoid dividing a fee with a law professor, in part because the agreement had been executed at O’Hare, between a Texas (I think) law firm and New Jersey (I think) professor.

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      I’d say only the PTO rules if the division concerned a matter pending before the PTO.

      Thanks. I can see that, since I can reside in a state and practice before the PTO without being licensed in that state. However, if I’m licensed in the state and practicing before the USPTO, I think I would err on the side of following the more restrictive rule. Are you are away of any outright conflicts between USPTO rules and state rules, such that there is a scenario in which it would be impossible to comply with both?

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    There’s an unaddressed choice of law issue lurking here, which, I assume, the parties have since addressed! (Most courts and ethical rules recognize that a lawyer should be subject to one set of rules at a particular time; usually, if a matter is before a tribunal, the tribunal’s rules apply.)

    Can you elaborate, please? As the judge suggests, there’s no cause of action accruing to Axcess from a violation of either Texas ethics rules or PTO ethics rules. Why can’t a state court evaluate both sets of rules when determining whether the attorneys breached a duty to their client?

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