Byrne v. Wood, Herron & Evans, LLP
676 F.3d 1024
Fed. Cir.2012Background
- Byrne sued for state-law legal malpractice arising from patent prosecution; case removed to federal court under §1338; panel initially hinted jurisdiction but urged en banc reconsideration; petition for rehearing en banc denied; opinion analyzes whether patent-law issues in malpractice claims render the action within federal jurisdiction; author argues current circuit precedent overextends jurisdiction contrary to Grable/Empire Healthchoice; dissent argues to reconsider jurisdictional approach; court ultimately holds §1338 jurisdiction does not extend to patent-related malpractice claims and calls for overruling AMT/Immunocept-based extensions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does §1338(a) jurisdiction extend to patent-related malpractice claims? | Byrne’s claim requires patent-law resolution. | Defendants rely on AMT/Immunocept to justify jurisdiction. | No, jurisdiction should not extend to patent-related malpractice claims. |
| Does Grable's four-factor test apply to these malpractice claims? | Grable shows federal question exists. | Grable not satisfied for these state-law torts. | Grable does not support jurisdiction here. |
| Is the court bound by AMT/Immunocept extensions in this context? | Those decisions should control. | They should be followed. | The court should overrule or reconsider those extensions. |
| Would exercising jurisdiction disrupt federal-state balance of labor? | Federal interest in patent uniformity is strong. | State courts handle malpractice; federal intrusion inappropriate. | Yes, would disrupt balance; jurisdiction not appropriate. |
| Should the court reconsider its prior holdings on patent-related malpractice jurisdiction? | Yes, to align with Grable/Empire Healthchoice. | Should maintain existing precedent. | Yes, overrule or limit prior holdings. |
Key Cases Cited
- Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (U.S. 1988) (established two-prong test for §1338 jurisdiction)
- Grable & Sons Metal Prods., Inc. v. Darue Eng'g & Mfg., 545 U.S. 308 (U.S. 2005) (requires a substantial federal issue and balance consideration)
- Empire Healthchoice Assur., Inc. v. McVeigh, 547 U.S. 677 (U.S. 2006) (limits Grable carve-out; narrow applicability)
- Merrell Dow Pharm., Inc. v. Thompson, 478 U.S. 804 (U.S. 1986) (presence of federal issue in state claim does not automatically confer jurisdiction)
- Air Measurement Techs., Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir. 2007) (patent issues in malpractice cases treated as jurisdictional basis)