781 F.3d 1340
Fed. Cir.2015Background
- NeuroRepair hired attorney Robert Cogan/The Nath Law Group in 2005 to prosecute patent applications and later sought transfer of files in 2007.
- NeuroRepair sued in San Diego Superior Court (Mar. 20, 2009) alleging legal malpractice, breach of fiduciary duty, contract breaches, negligent misrepresentation, and related state-law claims arising from patent prosecution.
- Defendants removed the case to federal district court (May 7, 2009) asserting federal jurisdiction as “a civil action relating to patents.”
- District court granted partial summary judgment for Defendants and entered final judgment; NeuroRepair appealed, challenging federal subject-matter jurisdiction.
- The Federal Circuit reviewed whether jurisdiction under 28 U.S.C. § 1338 existed in light of Gunn v. Minton and concluded it did not.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether removal was proper because the state-law malpractice action "arose under" federal patent law (28 U.S.C. § 1338) | NeuroRepair argued its malpractice claims depend on patent-law questions about claim scope and timing, creating federal-question jurisdiction | Defendants argued the malpractice necessarily raises substantive patent issues and that prosecution-context malpractice can have forward-looking effects, justifying federal jurisdiction | Held: Removal improper—no federal jurisdiction under § 1338 per Gunn; remand to state court ordered |
| Whether patent law questions are "necessarily raised" by the complaint | NeuroRepair relied on allegations that Defendants’ acts prevented timely issuance and broader claims, making patent law a necessary element | Defendants argued patentability and prosecution history are essential to NeuroRepair’s right to relief | Held: Not necessarily raised—state claims include multiple non-patent theories so patent law is not an indispensable element |
| Whether any patent issue is "actually disputed" and "substantial" to the federal system | NeuroRepair contended disputed patent issues (timing/scope) are central and affect more than the parties | Defendants stressed the dispute over whether claims were patentable and would have issued earlier; argued potential wider impact | Held: Although an actual dispute exists, it is not "substantial" to the federal system (too fact-bound, hypothetical, and unlikely to control other cases) |
| Whether exercising federal jurisdiction would disrupt the federal-state balance in regulating lawyers | NeuroRepair argued federal adjudication appropriate given patent-law complexity | Defendants urged a prosecution-malpractice exception to Gunn and highlighted possible forward-looking effects on USPTO practice | Held: Federal jurisdiction would disrupt the state regulatory interest in supervising attorneys; Gunn forecloses broad exceptions for prosecution malpractice |
Key Cases Cited
- Gunn v. Minton, 133 S. Ct. 1059 (2013) (state legal malpractice claims based on patent matters rarely arise under federal patent law; sets four-part Grable test application)
- Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988) (plaintiff’s right to relief must necessarily depend on substantial federal patent question to arise under patent law)
- Grable & Sons Metal Prods. v. Darue Eng’g, 545 U.S. 308 (2005) (federal-question test for state-law claims articulated)
- Empire HealthChoice Assurance, Inc. v. McVeigh, 547 U.S. 677 (2006) (factors for assessing whether a federal issue is substantial)
- C.R. Bard, Inc. v. Schwartz, 716 F.2d 874 (Fed. Cir. 1983) (federal circuit authority to decide whether district court had jurisdiction under § 1338)
- Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567 (Fed. Cir. 1997) (standard: removal proper only if federal subject-matter jurisdiction would have existed had the case been filed in federal court)