Davis v. Brouse McDowell, L.P.A., 2009-1395.

• Decision Date: 02 March 2010
• Docket Number: No. 2009-1395.,2009-1395.
• Parties: Heather A. DAVIS, Plaintiff-Appellant, v. BROUSE McDOWELL, L.P.A. and Daniel A. Thomson, Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

596 F.3d 1355

Heather A. DAVIS, Plaintiff-Appellant, v. BROUSE McDOWELL, L.P.A. and Daniel A. Thomson, Defendants-Appellees.

No. 2009-1395.

United States Court of Appeals, Federal Circuit.

March 2, 2010.

Steven D. Bell, Steven D. Bell Co., L.P.A., of Brecksville, OH, argued for plaintiff-appellant. Of counsel on the brief were Jeffrey R. Sadlowski, Jeffrey R. Sadlowski, LLC, of Brecksville, OH, and Himanshu S. Amin, Himanashu S. Amin, LLC, of Cleveland, OH.

James A. King, Porter, Wright, Morris & Arthur LLP, of Columbus, OH, argued for defendants-appellees. With him on the brief was Bryan R. Faller.

Before NEWMAN, BRYSON, and MOORE, Circuit Judges.

MOORE, Circuit Judge.

Heather A. Davis appeals from a decision of the United States District Court for the Northern District of Ohio granting summary judgment in favor of Daniel A. Thomson and Brouse McDowell, L.P.A. (collectively, Defendants). Because the district court correctly determined that Ms. Davis failed to introduce evidence sufficient to establish a genuine issue of material fact as to an essential element of her case, we affirm.

I. BACKGROUND

Ms. Davis is a solo inventor who developed the website, search engine, and business known as The IP-Exchange. Ms. Davis describes The IP-Exchange as a social networking platform targeted at "intellectual property professionals and non-professionals alike." In 2003, Ms. Davis contacted Mr. Thomson, an attorney who was then employed by the Ohio-based law firm Brouse McDowell, L.P.A. Ms. Davis requested general information about patent protection and told Mr. Thomson that she was particularly interested in obtaining international patent coverage.

Mr. Thomson responded by sending Ms. Davis a letter explaining various aspects of the Patent Cooperation Treaty (PCT), which provides a unified procedure for filing a single patent application in multiple countries. Mr. Thomson's letter discussed the advantages of filing patent applications under the PCT and the deadlines and costs associated with PCT applications. The letter did not mention the "absolute novelty" rule that applies in certain countries to bar an inventor from obtaining a patent if she has publicly disclosed her invention prior to filing an application. Ms. Davis went live with her IP-Exchange website in 2005.

On January 20, 2006, Ms. Davis filed two provisional patent applications with the United States Patent and Trademark Office (PTO). These provisional applications related to The IP-Exchange website and search engine, respectively. Under 35 U.S.C. § 119(e), Ms. Davis was required to file a U.S. non-provisional (or utility) patent application within one year of filing the corresponding provisional application if she wanted to retain the January 20, 2006 priority date. Similarly, Ms. Davis had one year from the filing date of the provisional application to file any PCT applications. See Paris Convention for the Protection of Industrial Property art. 4(A), March 20, 1883, 21 U.S.T. 1583. This one-year limit set the filing deadline for Ms. Davis's utility and PCT applications as Monday, January 22, 2007.

On Wednesday, January 17, 2007—five days before the filing deadline for the utility and PCT applications—Ms. Davis again contacted Mr. Thomson. She told him about the provisional applications relating to The IP-Exchange and the upcoming deadline for filing corresponding utility applications, and she asked if he could prepare and file U.S. utility and PCT applications on or before the following Monday, January 22. Mr. Thomson agreed to prepare and file the applications by the deadline. However, he told Ms. Davis that he was leaving the following day for vacation and would not return until Monday. He asked Ms. Davis to provide him with all necessary files before he left.

On Thursday, January 18, Ms. Davis sent Mr. Thomson an email with an attachment containing fourteen pages of single-spaced claims that she believed could be used for her inventions. Ms. Davis told Mr. Thomson's assistant that she had an additional 275 pages of material relating to the inventions that she wanted to provide to Mr. Thomson. Due to technical difficulties, however, Ms. Davis was unable to provide Mr. Thomson's assistant with these materials until the day after he left.

Mr. Thomson returned from his vacation as scheduled, on Monday, January 22. Defendants concede that no other Brouse McDowell attorney worked on Ms. Davis's applications during his absence. Mr. Thomson copied content from Ms. Davis's provisional applications to create three corresponding U.S. utility patent applications and filed the utility applications by the end of the day. Due to the looming deadline, Mr. Thomson planned to get the applications on file and "go back and clean [them] up" later. J.A. 1394 (Thomson Dep. 119:23-24, July 1, 2008). He did not file any PCT applications on January 22. Ms. Davis alleges that the U.S. applications prepared and filed by Mr. Thomson were deficient in various respects and that these deficiencies ultimately precluded her from securing patents on her inventions.

That evening, Ms. Davis contacted Mr. Thomson via telephone and email to verify the status of the PCT applications. Mr. Thomson responded, in an email sent at 10:47 p.m., that he had not filed any PCT applications. He explained that "I do not think it is worth spending the money, since you will not be able to obtain patent protection in Europe." J.A. 1347. After further discussion with Ms. Davis the next day, Mr. Thomson agreed to prepare the requested PCT applications. He filed the PCT applications on January 25, 2007.

The relationship between Ms. Davis and Mr. Thomson continued to deteriorate, and in June 2007 Mr. Thomson withdrew his representation of Ms. Davis before the PTO. Ultimately, Ms. Davis's patent applications went abandoned. Ms. Davis asserts that because her inventions lacked patent protection her investors withdrew their funding, leaving her unable to operate The IP-Exchange as a business.

In January 2008, Ms. Davis sued Defendants in the Court of Common Pleas for Summit County, Ohio. The originally filed complaint alleged that Defendants committed malpractice by failing to timely file three PCT applications on Ms. Davis's inventions. Ms. Davis amended her complaint in May 2008 to allege that Defendants committed malpractice by failing to file the three PCT applications as well as by "other omissions."

In June 2008, Defendants removed the action to federal court. Defendants explained in their Notice of Removal that Ms. Davis had testified at deposition that the "other omissions" recited by the complaint included Mr. Thomson's alleged negligence in preparing and filing the U.S. applications. Defendants asserted that adjudicating Ms. Davis's malpractice claims would necessarily involve a resolution of the patentability of her inventions. Therefore, according to Defendants, Ms. Davis's claims raised a substantial question of federal patent law over which the district court had exclusive jurisdiction pursuant to 28 U.S.C. § 1338(a).

The parties engaged in discovery, exchanged expert reports, and deposed each others' experts. Defendants then filed a motion for summary judgment seeking dismissal of Ms. Davis's claims, and Ms. Davis filed a motion for partial summary judgment on Defendants' affirmative defenses. The court granted Defendants' motion in its entirety, dismissed Ms. Davis's motion as moot, and entered judgment in favor of Defendants. Ms. Davis appeals.

II. DISCUSSION

A.

We must first determine whether we have jurisdiction over this appeal. Pursuant to 28 U.S.C. § 1295(a)(1), we have exclusive jurisdiction over an appeal from a final district court decision if the court's jurisdiction was based at least in part on 28 U.S.C. § 1338. Section 1338(a) provides that federal district courts have exclusive jurisdiction over actions "arising under any Act of Congress relating to patents." Here, the district court determined that it had jurisdiction over Ms. Davis's malpractice claim pursuant to 28 U.S.C. § 1338(a). We review the court's jurisdictional determination without deference. Air Measurement Techs., Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262, 1267 (Fed.Cir.2007).

The Supreme Court set forth the test for determining whether a district court has jurisdiction pursuant to 28 U.S.C. § 1338(a) in Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 108 S.Ct. 2166, 100 L.Ed.2d 811 (1988): jurisdiction extends to those cases "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." Id. at 808-09, 108 S.Ct. 2166. If the well-pleaded complaint presents multiple theories supporting a claim, that claim "may not form the basis for § 1338(a) jurisdiction unless patent law is essential to each of those theories." Id. at 810, 108 S.Ct. 2166.

Ms. Davis's cause of action for legal malpractice arises under Ohio state law. Therefore, we must determine whether patent law is a "necessary element" of a claim presented in her complaint. Id. at 809, 108 S.Ct. 2166. To establish a cause of action for legal malpractice based on negligent representation in Ohio, a plaintiff must show: "(1) that the attorney owed a duty or obligation to the plaintiff, (2) that there was a breach of that duty or obligation and that the attorney failed to conform to the standard required by law, and (3) that there is a causal connection between the conduct complained of and the resulting damage or loss." Vahila v. Hall, 77 Ohio St.3d 421, 674 N.E.2d 1164, 1169 (1997). Ms. Davis's complaint alleges that she had an attorney-client relationship with Defendants and that Defendants breached their duty to her by failing to timely file the PCT applications and...