Thursday, March 22, 2012

O'Malley's dissent in Byrne in the legal malpractice area

In Byrne v. Wood, Herron , on the subject on legal malpractice cases in the patent area [PETITION FOR REHEARING EN BANC denied ], Judge O’MALLEY authored a lengthy dissent, arguing against federal jurisdiction.

From the dissent, giving background on the case:

The gist of Byrne’s malpractice case is that defendants negligently failed to secure broader patent protection for his invention from the United States Patent and Trademark Office (“PTO”), and, as a result, Byrne was unsuccessful in a subsequent patent infringement lawsuit against Black & Decker Corporation and related entities (collectively, “Black & Decker”). See Byrne v. Black & Decker Corp., 2007 WL 1492101 (Fed. Cir. May 21, 2007). All agree that Byrne’s claim is a purely state law claim for which federal law creates no cause of action.


On appeal to this court, a majority of the panel agreed that our current case law extended § 1338 jurisdiction over this action but noted that, because it is inconsistent with Supreme Court precedent, that case law should be revisited. See Byrne v. Wood, Herron & Evans, LLP, 2011 WL 5600640, at *5 (Fed. Cir. Nov. 18, 2011) (“Although we must adhere to our precedent, we believe this court should re-evaluate the question of whether jurisdiction exists to entertain a state law malpractice claim involving the validity of a hypothetical patent . . . .” (emphasis in original)). The panel then reluctantly resolved the merits of the appeal, and this petition for rehearing en banc followed.

Words of Justice Oliver Wendell Holmes, Jr. show up in footnote 2 of the dissent. Footnote 3 begins: See also IMT, Inc. v. Haynes & Boone, L.L.P., 1999 WL 58838 (N.D. Tex. Feb. 1, 1999) (remanding a legal malpractice claim to state court where the plaintiff alleged that its attorney’s negligence in filing a continuation-in-part patent application instead of a new patent application raised questions about the patent’s validity and enforceability);

Of the year 2007:

In 2007, the Federal Circuit weighed in on this issue in what one commentator has described as a “substantial shift in the view of whether federal or state courts have jurisdiction over patent-related legal malpractice claims.” Robert W. Hesselbacher, Jr., Which Court Decides? Legal Malpractice Claims Arising from Patents, 51 No. 5 DRIFTD 32 (May 2009). In that year, a single panel of this court issued two decisions on the same day that, according to the panel, resolved an “issue of first impres- sion” – i.e., whether § 1338 jurisdiction exists where a legal malpractice claim requires resolution of an underly- ing question of patent law. See Air Measurement Techs., Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir. 2007) (“AMT”); Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. 2007).


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