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WASHINGTON � In two separate legal malpractice cases, one a case of first impression, the U.S. Court of Appeals for the Federal Circuit on Monday held that federal courts have jurisdiction over state-law legal malpractice claims where patent law is a necessary element of the malpractice claim. In Air Management Technologies Inc. (AMT) v. Akin Gump Strauss Hauer & Feld and Branscomb P.C., No. 2007-1035, a three-judge panel held that because the underlying suit here is a patent infringement action, the district court would have to adjudicate, hypothetically, the merits of the infringement claim. “Because proof of patent infringement is necessary to show AMT would have prevailed in the prior litigation, patent infringement is a �necessary element’ of AMT’s malpractice claim and therefore apparently presents a substantial question of patent law” conferring federal jurisdiction. In the second case, Immunocept v. Fulbright & Jaworski, No. 2006-1432, a legal malpractice case based on alleged errors in patent prosecution, the court also found federal jurisdiction but held the malpractice claim was barred by the statute of limitations. In 1989, AMT engaged patent attorney Gary Hamilton to secure patent protection for a safety device for fire fighters and emergency technicians and the related technology. The company began marketing a prototype of the invention that year with Hamilton’s knowledge, according to the court. Hamilton, who practiced with Akin Gump at the time, filed the first patent application in 1991. He now practices with Hamilton & Terrile. AMT filed six infringement suits in the Western District of Texas and all were settled between 2001 and 2003 for a total of approximately $10 million without a judicial determination of infringement, invalidity, or unenforceability of AMT’s patents. During the course of that litigation, AMT, with the help of new counsel, discovered various errors Hamilton allegedly made during patent prosecution and patent litigation. AMT filed suit against Hamilton and several law firms in a Texas state court on May 28, 2003, for legal malpractice, negligence, negligent misrepresentation, and breach of fiduciary duties � all state law claims. AMT alleges that Akin Gump’s errors forced them to settle the prior litigation far below the fair market value of the patents because the prior litigation defendants were able to raise as defenses: invalidity and unenforceability that would not have existed without attorney error. Akin Gump removed the case to federal court, arguing that the suit’s resolution required a decision on a substantial question of patent law. AMT sought a remand. But in 2006 � three years after the removal � the parties switched positions on jurisdiction. The district court denied the law firms’ remand motion and found it had jurisdiction under 28 U.S.C. 1338. Writing for the Federal Circuit panel, Chief Judge Paul Michel said the U.S. Supreme Court had set out a two-part test for determining exclusive federal jurisdiction under section 1338. The high court held that jurisdiction extends to any case “in which a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.” The key question in the Akin Gump case, according to Michel, is whether patent law is a necessary element of AMT’s malpractice claim. A review of the complaint reveals that approximately seven allegations of error in the context of patent prosecution or patent litigation are the bases of AMT’s legal malpractice claim, noted the panel. “Regardless of the defenses AMT would have to address, if any, AMT would certainly have to prove patent infringement; that alone confers � 1338 jurisdiction,” the panel held. In the Immunocept case, Immunocept sued Fulbright & Jaworski which it had hired to seek patent protection for its invention of a blood filtration technology. The patent prosecuted by Fulbright allegedly suffered from a fatal flaw, a drafting error that narrowed the scope of the patent, according to the court. “Claim scope determination is a question of law that can be complex in that it may involve many claim construction doctrines,” wrote Michel. “Litigants will benefit from federal judges who are used to handling these complicated rules.” Because the claim scope determination involved in the malpractice claim presents a substantial question of patent law, the panel said, jurisdiction is proper under � 1338. The panel further held that Immunocept’s malpractice claim was barred by the statute of limitations and it affirmed the district court’s grant of summary judgment for Fulbright.

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