Warrior Sports, Inc. v. Dickinson Wright, P.L.L.C.
631 F.3d 1367
Fed. Cir.2011Background
- Warrior owns multiple lacrosse-related patents, including the '216 patent at issue.
- Warrior was represented by Artz & Artz P.C. (later Dickinson Wright) during prosecution, reissue, and related litigation.
- The '216 patent lapsed for nonpayment of maintenance fee in October 2004; reinstatement was pursued by the firm.
- Warrior alleged malpractice by counsel, including inequitable-conduct-related mischaracterizations and failure to timely pursue reinstatement.
- In STX, Inc. v. Warrior, the district court stayed infringement pending inequitable-conduct bench trial; settlement occurred before ruling, and infringement was not tried.
- Warrior sued Dickinson in Michigan state court; after removal/refiling in federal court, the district court dismissed for lack of subject-matter jurisdiction; the case was remanded.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does §1338 confer jurisdiction over the malpractice claim? | Warrior asserts patent-law is central to relief; the claim arises under patent law. | Dickinson contends the claims are state-law legal malpractice and not within §1338. | Yes; the claim falls under §1338 as patent-law is a necessary element. |
| Is this court's appellate jurisdiction proper under §1295(a)(1)? | Because district court’s decision involved §1338, appellate review lies here. | Jurisdiction should follow the regional circuit if §1338 jurisdiction was lacking. | This court has jurisdiction to decide the appeal. |
| Is patent law a necessary element of Warrior's malpractice claim under Michigan law? | But-for patent-law issues, Warrior would have prevailed; claims arise from patent-related facts. | Claims can be analyzed as ordinary malpractice without patent-law resolution. | Patent law is a necessary element; jurisdiction attaches and the district court must address the underlying patent issues. |
Key Cases Cited
- Christianson v. Colt Industries Operating Corp., 486 U.S. 800 (1988) (two-category framework for §1338 jurisdiction)
- Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir. 2007) (malpractice claims where patent-law merits are necessary)
- C.R. Bard, Inc. v. Schwartz, 716 F.2d 874 (Fed. Cir. 1983) (controls appellate review when district court lacks §1338 jurisdiction)
- ClearPlay, Inc. v. Abecassis, 602 F.3d 1364 (Fed. Cir. 2010) (two-part test for 'arising under' patent-law claims)
- Davis v. Brouse McDowell, L.P.A., 596 F.3d 1355 (Fed. Cir. 2010) (definition of 'claim' and proximate-cause standard in legal malpractice)