The claim at issue was legal malpractice:
Here, Memorylink alleged a single count of legal malpractice, under Illinois law, based on the defendants’ alleged negligent failure to identify the proper inventors in a patent application. The district court dismissed the complaint as time-barred under the relevant Illinois statutes of limitations and repose, and Memorylink appealed to this court. Appellees moved to transfer the appeal to the Seventh Circuit on grounds that the cause of action arose under state, not federal patent law. We denied that motion on the mistaken belief that Memorylink’s complaint “sought to correct the inventorship” of the patent at issue. Memorylink Corp. v. Motorola, Inc. 419 Fed.App’x. 991, 992 (Fed. Cir. 2011). That ruling was expressly “without prejudice” to Appellees’ right to raise the issue again to the merits panel. Id. Appellees, thereafter, continued to press their jurisdictional objection in their merits brief.
Footnote 1 raises jurisdiction issues:
The fact that defendants—unsurprisingly, given their successful appeal in this court—now consent to our jurisdiction is irrelevant. See, e.g., Coastal Corp. v. United States, 713 F.2d 728, 730 (Fed. Cir. 1983) (“Juris- diction of a tribunal, however, cannot be conferred by waiver or acquiescence. A court always is obligated to consider not only its own jurisdiction but that of the tribunal from which an appeal is taken.”) (citing Mans- field, Coldwater & Lake Mich. Ry. Co. v. Swan, 111 U.S. 379, 382 (1884)).
Of Rule 36:
By resorting to Rule 36, the panel necessarily resolved Appellee’s jurisdictional challenge— rejecting it without discussion.
Though the panel’s use of Rule 36 to resolve this mat- ter, including the question of our subject matter jurisdic- tion over it, is understandable given the extent and breadth of our case law on the topic,2 it should not insu- late the decision from en banc review. A Rule 36 judg- ment remains a judgment of this court and parties should not be discouraged from asking the entire court to assess the propriety of those judgments where our subject matter jurisdiction is in question.
As discussed at length in my dissent from the en banc denial in Byrne, the jurisdictional predicate upon which the exercise of appellate review in this court rests is wrong.
While Rule 36 may provide an efficient tool through which to dispose of appeals that merely retread familiar ground, it does not relieve us of our obligation to deter- mine whether that ground needs re-tilling. It is inappro- priate to allow our reluctance to consider Rule 36 cases en banc to shield important jurisdictional decisions from review, particularly where, as here, non-frivolous chal- lenges to our subject matter jurisdiction have been lodged.