Byrne v. Wood, Herron & Evans, LLP, No. 2011–1012.

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtPER CURIAM.
Citation102 U.S.P.Q.2d 1073,676 F.3d 1024
Docket NumberNo. 2011–1012.
Decision Date22 March 2012
PartiesStephen E. BYRNE, Plaintiff–Appellant, v. WOOD, HERRON & EVANS, LLP, David S. Stallard, Kevin G. Rooney, Theodore R. Remaklus, P. Andrew Blatt, and Wayne L. Jacobs, Defendants–Appellees.

102 U.S.P.Q.2d 1073
676 F.3d 1024

Stephen E. BYRNE, Plaintiff–Appellant,
v.
WOOD, HERRON & EVANS, LLP, David S. Stallard, Kevin G. Rooney, Theodore R. Remaklus, P. Andrew Blatt, and Wayne L. Jacobs, Defendants–Appellees.

No. 2011–1012.

United States Court of Appeals, Federal Circuit.

March 22, 2012.


Appeal from the United States District Court for the Eastern District of Kentucky in case no. 08–CV–0102, Judge Danny C. Reeves.James A. Jablonski, Law Office of James A. Jablonski, of Denver, CO, filed a petition for rehearing en banc for plaintiff-appellant.

J. Robert Chambers, Wood, Herron & Evans, L.L.P., of Cincinnati, OH, filed a response to the petition for defendants-appellees.

Before RADER, Chief Judge, NEWMAN, LOURIE, BRYSON, GAJARSA, * LINN, DYK, PROST, MOORE, O'MALLEY, REYNA, and WALLACH, Circuit Judges.

DYK, Circuit Judge, with whom NEWMAN and LOURIE, Circuit Judges, join, concurs in the denial of the petition for rehearing en banc.

O'MALLEY, Circuit Judge, with whom WALLACH, Circuit Judge, joins, dissents from the denial of the petition for rehearing en banc.

ON PETITION FOR REHEARING EN BANC
ORDER
PER CURIAM.

A petition for rehearing en banc was filed by Plaintiff–Appellant, and a response thereto was invited by the court and filed by Defendants–Appellees. The petition for rehearing was referred to the panel that heard the appeal, and thereafter the petition for rehearing en banc and the response were referred to the circuit judges who are authorized to request a poll of whether to rehear the appeal en banc. A poll was requested, taken, and failed.

Upon consideration thereof,

It Is Ordered That:

(1) The petition of Plaintiff–Appellant for panel rehearing is denied.

(2) The petition of Plaintiff–Appellant for rehearing en banc is denied.

(3) The mandate of the court will issue on March 29, 2012.

DYK, Circuit Judge, with whom NEWMAN and LOURIE, Circuit Judges, join, concurs in the denial of the petition for rehearing en banc.

Under the Supreme Court's decision in Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 809, 108 S.Ct. 2166, 100 L.Ed.2d 811 (1988), federal jurisdiction under 28 U.S.C. § 1338 exists if “the plaintiffs 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.” We have followed Christianson in subsequent cases involving legal malpractice, holding that federal jurisdiction exists, for example, “when the adjudication of the malpractice claim requires the court to address the merits of the plaintiffs underlying patent infringement lawsuit,” Warrior Sports, Inc. v. Dickinson Wright, P.L.L.C., 631 F.3d 1367, 1371 (Fed.Cir.2011), and when a “claim drafting error is a necessary element of the malpractice cause of action,” Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281, 1285 (Fed.Cir.2007). In so holding, we have recognized the strong federal interest in patent law uniformity as manifested by Congress's decision to give exclusive jurisdiction to the federal district courts and on appeal to this court. See Immunocept, 504 F.3d at 1285–86; Air Measurement Techs., Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262, 1272 (Fed.Cir.2007); see also USPPS, Ltd. v. Avery Dennison Corp., 647 F.3d 274, 284 (5th Cir.2011). All of the malpractice cases that we have held are within the scope of section 1338 as pleaded have required the resolution of substantive patent law issues.1 The existence of these issues necessarily makes the issues “substantial” within the meaning of Christianson, 486 U.S. at 809, 108 S.Ct. 2166, and indicates a “serious federal interest” in federal adjudication within the meaning of Grable & Sons Metal Products, Inc. v. Darue Engineering & Manufacturing, 545 U.S. 308, 313, 125 S.Ct. 2363, 162 L.Ed.2d 257 (2005).

Judge O'Malley's dissent, in arguing that section 1338 does not confer jurisdiction over malpractice claims dependent on federal patent law, minimizes the substantial federal interest in federal adjudication of the patent law issues in these cases. Patent-related malpractice claims necessarily involve attorney conduct before the U.S. Patent and Trademark Office (“PTO”) or before the federal courts (because of our exclusive jurisdiction), and there is a substantial federal interest in ensuring that federal patent law questions are correctly and uniformly resolved in determining the standards for attorney conduct in these proceedings, even when the patent law issue is case-specific.2 See generally Grable, 545 U.S. 308, 125 S.Ct. 2363. Indeed, attorney conduct in patent cases is implicated by the patent law itself, such as by the doctrine of inequitable conduct, the exceptional-case statute, and the statutory provisions authorizing regulation of PTO practice. See Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1290 (Fed.Cir.2011) (en banc) (noting that an attorney's submissions to the PTO may be a basis for an inequitable conduct finding); Brooks Furniture Mfg., Inc. v. Dutailier Int'l, Inc., 393 F.3d 1378, 1381 (Fed.Cir.2005) (noting that attorney misconduct may be a predicate for an exceptional case finding under 35 U.S.C. § 285); Carter v. ALK Holdings, Inc., 605 F.3d 1319, 1324 (Fed.Cir.2010) (“The standards for practice before the PTO are governed by federal law....”). So too all federal patent rights are created by actions of a federal agency, the PTO. See Grable, 545 U.S. at 315, 125 S.Ct. 2363 (“The Government thus has a direct interest in the availability of a federal forum to vindicate its own administrative action....”).

State court decisions imposing attorney discipline for conduct before the PTO and in federal patent litigation based on an incorrect interpretation of patent law are almost certain to result in differing standards for attorney conduct and to impair the patent bar's ability to properly represent clients in proceedings before the PTO and in the federal courts. Denying federal jurisdiction over these cases would allow different states to reach different conclusions as to the requirements for federal patent law in the context of state malpractice proceedings. There is a substantial federal interest in preventing state courts from imposing incorrect patent law standards for proceedings that will exclusively occur before the PTO and the federal courts. To be sure, with some exceptions,3 state law governing attorney malpractice is not preempted by federal law. See Kroll v. Finnerty, 242 F.3d 1359, 1366 (Fed.Cir.2001). But this hardly lessens the significant federal interest in the correct and uniform interpretation of federal patent law in the course of such state malpractice proceedings. That important interest supports recognizing federal jurisdiction where the outcome of the proceeding depends on an interpretation of federal patent law, and demonstrates that such adjudication does not upset the federal-state balance. See Christianson, 486 U.S. at 809, 108 S.Ct. 2166.

I see no reason to revisit this court's repeated holdings that where the outcome of malpractice cases turns on federal patent law, federal jurisdiction exists.

O'MALLEY, Circuit Judge, with whom WALLACH, Circuit Judge, joins, dissenting from the denial of the petition for rehearing en banc.

It is time we stop exercising jurisdiction over state law malpractice claims. I dissent from the court's refusal to consider this matter en banc so that the case law through which we have expanded the scope of our jurisdiction to these purely state law matters can be reconsidered and revamped.

This court has justified expanding the reach of our jurisdiction to cover state law malpractice claims by reading Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 108 S.Ct. 2166, 100 L.Ed.2d 811 (1988), to authorize our doing so. Specifically, our case law concludes that, whenever a patent law issue is raised in the context of a state law claim and must be resolved in the course of that otherwise state law inquiry, federal jurisdiction will lie, as will exclusive appellate jurisdiction in this court. That reading of Christianson is wrong, however. Supreme Court precedent permits federal courts to exercise federal question jurisdiction over state law claims only in the rare case where a federal issue is “actually disputed and substantial,” and where doing so will not upset “any congressionally approved balance of federal and state judicial responsibilities.” Grable & Sons Metal Prods., Inc. v. Darue Eng'g & Mfg., 545 U.S. 308, 314, 125 S.Ct. 2363, 162 L.Ed.2d 257 (2005). “[T]he mere presence of a federal issue in a state cause of action does not automatically confer federal-question jurisdiction.” Merrell Dow Pharm. Inc. v. Thompson, 478 U.S. 804, 813, 106 S.Ct. 3229, 92 L.Ed.2d 650 (1986). Rather, courts must undertake a four-step inquiry as to whether: (1) a federal issue is a necessary element of a state law claim; (2) a federal issue is actually disputed; (3) a federal issue is substantial; and (4) exercising federal jurisdiction will disturb the balance of federal and state judicial responsibilities. Grable, 545 U.S. at 314, 125 S.Ct. 2363. In choosing to exercise jurisdiction over malpractice claims arising out of patent matters, we have ignored the latter two parts of the inquiry.

Even if Christianson 's directives were once ambiguous, subsequent Supreme Court case law has clarified the test in a way that leaves no doubt that our narrow reading of Christianson can no longer be justified. As discussed below, proper application of Supreme Court precedent demands that we decline to exercise jurisdiction over this and similar state law malpractice actions. Rather than force the Supreme Court to correct our jurisdictional mistakes, we should take this opportunity to do so ourselves.

I.

Stephen Byrne originally brought this action in the Circuit Court of Kenton County, Kentucky, asserting a state law claim for legal malpractice based...

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12 practice notes
  • United States v. Rosales-Bruno, No. 12–15089.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (11th Circuit)
    • June 19, 2015
    ...but, as we noted in our earlier opinion, battery under Florida law is not categorically a crime of violence either. See Rosales–Bruno I, 676 F.3d at 1024 (citing Johnson v. United States, 559 U.S. 133, 138–44, 130 S.Ct. 1265, 1270–73, 176 L.Ed.2d 1 (2010) ). The district court properly did ......
  • MDS (Canada) Inc. v. Rad Source Techs., Inc., No. 11–15145.
    • United States
    • U.S. Court of Appeals — Eleventh Circuit
    • July 1, 2013
    ...from both federal and state law rather than a context-free inquiry into the meaning of a federal law.” Byrne v. Wood, Herron & Evans LLP, 676 F.3d 1024, 1034–35 (Fed.Cir.2012) (O'Malley, J., dissenting from the denial of a petition for rehearing en banc) (quoting Bennett v. Sw. Airlines, Co......
  • Landmark Screens, LLC v. Morgan, Lewis, & Bockius, LLP, No. 2011–1297.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • April 23, 2012
    ...banc. I hold this view for the reasons detailed in my dissent from the denial of rehearing en banc in Byrne v. Wood, Herron & Evans, LLP, 676 F.3d 1024 (Fed.Cir.2012) (O'Malley, J., dissenting from denial of petition for rehearing en banc) and in my concurrence in USPPS, Ltd. v. Avery Denni......
  • MDS (Can.) Inc. v. RAD Source Techs., Inc., No. 11-15145
    • United States
    • United States Courts of Appeals. United States Court of Appeals (11th Circuit)
    • July 1, 2013
    ...from both federal and state law rather than a context-free inquiry into the meaning of a federal law." Byrne v. Wood, Herron & Evans LLP, 676 F.3d 1024, 1034-35 (Fed. Cir. 2012) (O'Malley, J., dissenting from the denial of a petition for rehearing en banc) (quoting Bennett v. Sw. Airlines, ......
  • Request a trial to view additional results
12 cases
  • United States v. Rosales-Bruno, No. 12–15089.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (11th Circuit)
    • June 19, 2015
    ...but, as we noted in our earlier opinion, battery under Florida law is not categorically a crime of violence either. See Rosales–Bruno I, 676 F.3d at 1024 (citing Johnson v. United States, 559 U.S. 133, 138–44, 130 S.Ct. 1265, 1270–73, 176 L.Ed.2d 1 (2010) ). The district court properly did ......
  • MDS (Canada) Inc. v. Rad Source Techs., Inc., No. 11–15145.
    • United States
    • U.S. Court of Appeals — Eleventh Circuit
    • July 1, 2013
    ...from both federal and state law rather than a context-free inquiry into the meaning of a federal law.” Byrne v. Wood, Herron & Evans LLP, 676 F.3d 1024, 1034–35 (Fed.Cir.2012) (O'Malley, J., dissenting from the denial of a petition for rehearing en banc) (quoting Bennett v. Sw. Airlines, Co......
  • Landmark Screens, LLC v. Morgan, Lewis, & Bockius, LLP, No. 2011–1297.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • April 23, 2012
    ...banc. I hold this view for the reasons detailed in my dissent from the denial of rehearing en banc in Byrne v. Wood, Herron & Evans, LLP, 676 F.3d 1024 (Fed.Cir.2012) (O'Malley, J., dissenting from denial of petition for rehearing en banc) and in my concurrence in USPPS, Ltd. v. Avery Denni......
  • MDS (Can.) Inc. v. RAD Source Techs., Inc., No. 11-15145
    • United States
    • United States Courts of Appeals. United States Court of Appeals (11th Circuit)
    • July 1, 2013
    ...from both federal and state law rather than a context-free inquiry into the meaning of a federal law." Byrne v. Wood, Herron & Evans LLP, 676 F.3d 1024, 1034-35 (Fed. Cir. 2012) (O'Malley, J., dissenting from the denial of a petition for rehearing en banc) (quoting Bennett v. Sw. Airlines, ......
  • Request a trial to view additional results

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