Solar Dynamics, Inc. v. Buchanan Ingersoll & Rooney, P.C.
211 So. 3d 294
Fla. Dist. Ct. App.2017Background
- Solar Dynamics hired Buchanan Ingersoll & Rooney and attorney Christopher Paradies to obtain a patent for a fastening shade system; U.S. Patent No. 7,316,237 issued in 2008.
- Potential licensee Playcore declined to accept the proposed license, calling the patent "too weak," and began marketing a similar shading system.
- Solar later sued Buchanan and Paradies in Florida state court for legal malpractice, alleging negligence in obtaining a patent that failed to protect Solar from competitors.
- Defendants moved to dismiss for lack of subject matter jurisdiction under 28 U.S.C. § 1338(a) (federal patent jurisdiction); the trial court dismissed without prejudice.
- The appellate court affirmed, concluding Solar’s malpractice claim necessarily requires resolution of core patent issues (scope, validity, infringement) that must be decided in federal court before a state malpractice action can proceed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Florida state court has subject-matter jurisdiction over Solar's malpractice claim | Solar: malpractice is a state-law claim that does not raise a substantial federal question and belongs in state court | Defs: resolving malpractice requires initial adjudication of patent scope/validity/infringement, which belongs in federal court under § 1338(a) | Held: No jurisdiction; state court must not decide core patent issues in the first instance; federal forum required first |
| Whether Gunn v. Minton compels state-court jurisdiction for patent-related malpractice claims | Solar: Gunn permits state courts to hear malpractice claims rooted in patent matters | Defs: Gunn applies only when there is a prior federal patent adjudication; absent that, Gunn does not allow state courts to decide core patent issues first | Held: Gunn is distinguishable; because there was no prior federal patent case, Gunn does not permit state adjudication here |
| Whether Solar may obtain malpractice relief without first suing alleged infringers in federal court | Solar: can proceed directly in state malpractice suit to prove patent was inadequately prosecuted | Defs: Solar must first litigate patent scope/validity/infringement in federal court; malpractice depends on that "case within a case" | Held: Solar must first pursue federal patent litigation; malpractice claim is premature in state court |
| Effect of allowing state court to decide patent issues via malpractice claims | Solar: avoids federal forum; protects client interests via malpractice remedy | Defs: would circumvent federal oversight and threaten uniformity of patent law | Held: Allowing state-first resolution would disrupt federal-state balance; cannot be permitted |
Key Cases Cited
- Gunn v. Minton, 133 S. Ct. 1059 (2013) (state malpractice claim did not "arise under" federal patent law where underlying patent issue had been decided in federal court)
- Grable & Sons Metal Prods. v. Darue Eng'g, 545 U.S. 308 (2005) (four-factor test for when a federal issue in a state claim confers federal jurisdiction)
- Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988) (when a plaintiff's right to relief necessarily depends on resolution of a substantial question of federal patent law, jurisdiction lies in federal court)
- New Marshall Engine Co. v. Marshall Engine Co., 223 U.S. 473 (1912) (not all questions touching patents vest jurisdiction in federal courts; line between federal and state matters must be drawn)
- Schachel v. Closet Concepts, Inc., 405 So. 2d 487 (Fla. 3d DCA 1981) (state action founded on rights created by patent laws arises under patent law and is within federal jurisdiction)