Air Measurement Corp v. Akin Gump (Fed. Cir. 2007).
Immunocept v. Fulbright & Jaworksi (Fed. Cir. 2007).
Through a pair of malpractice cases, the CAFC has expanded its reach over state law malpractice claims. These cases conclude that federal courts hold exclusive jurisdiction over cases involving state law malpractice claims that require resolution of a “substantial question of federal patent law” such as infringement, validity, enforceability, or patent claim scope. This general concept is not new, rather, these case incrementally expand the type of patent malpractice claims that require federal court decisionmaking. The issue is whether the particular form of malpractice asserted requires a determination of a substantial question of federal patent law.
In Air Measurement (AMT), the patent holder sued its attorney for malpractice based on a series of alleged mistakes, including filing after an on sale bar date, failing to submit two prior art references; and failing to properly inform AMT of the mistakes. AMT was still able to collect $10m in royalties on the patent family, but asserted that it would have collected more but for the alleged attorney error. Because adjudication of the malpractice claim requires a determination of (potential) patent infringement, the dispute properly ‘arises under’ the US Patent Law. 28 USC 1338.
In Immunocept, the patent holder attempted to license its patents to J&J back in 2002. J&J’s attorneys found that the patent was narrowly drafted and refused to take a license. (‘Consisting of’ claim language). In 2005, the Immunocept sued its patent attorneys for malpractice. On appeal, the CAFC agreed that federal courts holds exclusive jurisdiction over this case because it requires a determination of patent claim scope – a substantial patent law question.
“Because patent claim scope defines the scope of patent protection, we surely consider claim scope to be a substantial question of patent law.”
After finding jurisdiction, the appellate panel affirmed the lower court’s finding that the claim was barred by a two-year statute of limitations. (Clock begins running after reasonable notice of the facts underlying a malpractice claim).