Roof Technical Services, Inc. v. Hill, 679 F.Supp.2d 749 (N.D.Texas 2010)
Underlying Patent/Trademark Matter
Facts: Plaintiff invented a roof venting technique and retained Defendant Hill to secure patent protection. In the instant action, Plaintiff alleged that it was unable to obtain patent protection due, in part, to Defendant’s failure to timely submit a conforming application to the U.S. Patent and Trademark Office. Based on that allegation, Plaintiff filed suit in the United States District Court, Northern District of Texas. Since there was no diversity of citizenship, the Court examined whether the action "arose under" federal patent law to establish jurisdiction.
Issue: Can a legal malpractice action based on underlying patent law issues be brought in federal court?
Ruling: Not where a determination of the professional negligence action requires only application of federal law.
Plaintiff argued that it properly brought the malpractice action in federal court, since a determination would require the Court to (1) analyze whether its invention was patentable under federal law; (2) the standard of care against which Defendant’s conduct would be measured requires reference to patent regulations and guidelines; and (3) the determination of damages requires a valuation of the allegedly lost patent.
The Court, however, found Plaintiff’s argument to be unpersuasive and held that the action was "traditionally" a state case. The Court found that federal jurisdiction would be inappropriate, since there was, apparently, no need to "determine the meaning of federal patent law". Rather, the issues raised required "only application of federal law to the specific facts of the case".
Furthermore, the Court explained that while "there is a federal interest in the uniform application of patent laws…that interest is not implicated here, where no patent rights are actually at stake."
No patent has issued for [Plaintiff’s] invention and none will issue. Thus, even if the Court must decided patent law issues, those decisions will not create or destroy any patent rights such that uniformity in the way patents are issued or enforced will be threatened. In other words, the determinations that might occur in this action do not justify resort to the experience, solicitude, and hope of uniformity that a federal forum offers on federal issues.
Boiled down, this action is about Defendant’s [alleged] failure to meet deadlines and communicate with their clients. Patent issues are merely floating on the periphery. Thus, this action does not belong in federal court.
Lesson: Actions that require only the application of federal law to make a determination with regard to plaintiff’s legal malpractice claims, do not sufficiently "arise under" federal law for purposes of establishing federal jurisdiction.