NEUROREPAIR malpractice case against Nath Law goes back to state court

The CAFC went through the requirements of Gunn v. Minton in analyzing the
malpractice case of

Neurorepair against THE NATH LAW GROUP AND ROBERT P. COGAN.

Some background of the malpractice case



In December 2005, NeuroRepair retained Robert
Cogan, an attorney with The Nath Law Group, to assist in
the prosecution of certain patent applications. Over time,
NeuroRepair became increasingly dissatisfied with what
it viewed as slow progress and excessive legal fees, and in
August 2007 NeuroRepair requested that Mr. Cogan
transfer the relevant files to another law firm, Welsh &
Katz, to continue prosecution before the United States
Patent and Trademark Office (“USPTO”). In September
2007, Defendants filed a request to withdraw from representation
of NeuroRepair before the USPTO, but continued
to assist NeuroRepair with other matters.


NeuroRepair filed suit against Defendants in the San
Diego Superior Court on March 20, 2009, alleging professional
negligence, breach of fiduciary duty, breach of
written contract, breach of oral contract, breach of implied
covenant of good faith and fair dealing, negligent misrepresentation,
and false promise. Defendants removed the
case to federal district court on May 7, 2009, on the
ground that it was “a civil action relating to patents.”
J.A. 55.

(...)

The principal issue this court must
address is whether jurisdiction in the district court was
proper in light of the Supreme Court’s recent pronouncement
in Gunn v. Minton.


The CAFC referred to the Gunn v. Minton case:


In its recent decision in Gunn v. Minton, the Court
made clear that state law legal malpractice claims will
“rarely, if ever, arise under federal patent law,” even if
they require resolution of a substantive question of federal
patent law. 133 S. Ct. at 1065. The Court reasoned
that while such claims “may necessarily raise disputed
questions of patent law,” those questions are “not substantial
in the relevant sense.” Id. at 1065, 1066. The
Court emphasized that “[b]ecause of the backward-looking
nature of a legal malpractice claim, the question is posed
in a merely hypothetical sense” and that “[n]o matter how
the state courts resolve that hypothetical ‘case within a
case,’ it will not change the real-world result of the prior
federal patent litigation.” Id. at 1066–67.



The conclusion by the CAFC:


In sum, federal jurisdiction is lacking here under
Gunn because no federal issue is necessarily raised,
because any federal issues raised are not substantial in
the relevant sense, and because the resolution by federal
courts of attorney malpractice claims that do not raise
substantial issues of federal law would usurp the important
role of state courts in regulating the practice of
law within their boundaries, disrupting the federal-state
balance approved by Congress.

(...)

Addressing what would have happened had the alleged
bad acts of Defendants not occurred requires a court
to engage in precisely the sort of backward-looking, hypothetical
analysis contemplated in Gunn. Exercise of
federal jurisdiction is therefore improper.
CONCLUSION
For these reasons, this court
VACATES AND REMANDS TO THE DISTRICT
COURT WITH INSTRUCTIONS TO REMAND THE
CASE TO CALIFORNIA STATE COURT