Subject Matter Jurisdiction in Legal Malpractice Claims: The Door Gets Slammed Shut Again

Dennis wrote up NeuroRepair v. Nath Law Grouphere.  The case to me puts another nail (probably not the last) in the coffin of the “substantial federal question” basis for asserting subject matter jurisdiction in cases based upon malpractice during patent prosecution or litigation.  Boiled down, because state law creates a malpractice claim, the fact that patent law will be an issue is not enough to convert a state law claim into one arising under federal law.

This is good, and bad. The good is that I’ve seen several of these cases bouncing around for years between state and federal systems. Having jurisdictional certainty is a good thing.  If someone files in state court, the case likely should remain there; if in federal court, it likely should be dismissed (absent independent subject matter jurisdictional grounds, obviously).

The bad news is that state judges, with no experience with patent law, are going to be deciding patent law issues.  This creates a little bit of the wild west, potentially.  I suspect overall that defense counsel would rather be in federal court, but that probably varies.


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.

2 thoughts on “Subject Matter Jurisdiction in Legal Malpractice Claims: The Door Gets Slammed Shut Again

  1. 2

    What fun. For patent issues, patent law as decided by the Supremes and CAFC would control. Those odd “state law/federal common law” issues are going to disappear, in my life time, as they’re not right, imho.

    The fun stuff is trying to explain to state judges/juries what a patent is…

  2. 1

    “Deciding patent law issues.”


    But what law is controlling when a state court is deciding. Assume that state is California. Assume that the issue is one of assignment of an invention ala Stanford v. Roche. Under controlling California law, Stanford wins. Under Federal Circuit law — which the Supreme Court questioned — Roche wins. How does the state court decide?

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