Summary
The United States Court of Appeals for the Federal Circuit held that a legal malpractice claim arising from alleged errors in patent prosecution presented a substantial and contested question of patent law, supporting exclusive federal jurisdiction under 28 U.S.C. § 1338. The court affirmed summary judgment for Fulbright & Jaworski, concluding that the malpractice claim was barred by the Texas two-year statute of limitations because patent attorney Thomas Felger reasonably should have known of the narrowed claim scope before the critical date and that knowledge was imputable to Immunocept. The court did not reach whether the claimed damages were too speculative.
Topics
Practice areas
Questions Presented
- Whether the Federal Circuit had exclusive appellate jurisdiction under 28 U.S.C. § 1295(a)(1) because the Texas legal-malpractice claim arose under federal patent law within the meaning of 28 U.S.C. § 1338.
- Whether the legal-malpractice claim was barred by Texas's two-year statute of limitations because Felger reasonably should have discovered the narrowed patent claim scope before the critical date and his knowledge was imputable to Immunocept.
- Whether the district court abused its discretion in denying Immunocept's Rule 59 motion.
Holdings
- When determination of patent claim scope is a necessary, substantial, and contested element of a state-law legal-malpractice claim arising from patent prosecution, the claim arises under federal patent law for purposes of § 1338, giving the Federal Circuit exclusive appellate jurisdiction under § 1295(a)(1).
- Immunocept's Texas legal-malpractice claim was barred by the two-year statute of limitations because Felger reasonably should have known by February 2002 that the phrase "consisting of" drastically narrowed the claims in the '418 patent, and that knowledge was properly imputed to Immunocept.
- The district court did not abuse its discretion in denying Immunocept's Rule 59 motion because the motion largely reiterated arguments concerning the statute-of-limitations issue, which independently barred the malpractice claim.
Key quotations
“where, as here, determination of claim scope is a necessary, substantial, and contested element of a malpractice claim stemming from patent prosecution, there is "arising under" jurisdiction under § 1338.” (1289)
“We further hold that the legal malpractice claim is barred by the Texas statute of limitations.” (1289)
“As a determination of patent infringement serves as the basis of § 1338 jurisdiction over related state law claims, so does a determination of claim scope.” (1286)
Factual background
Lee, Matson, and Robert Wilton Pryor developed large pore hemofiltration technology and hired Fulbright to obtain patent protection. The resulting U.S. Patent No. 5,571,418 included claim 1 with the transition phrase "consisting of," which significantly narrowed the claim scope. During 2002 investment negotiations, Johnson & Johnson's patent attorneys identified the restrictive claim language and Therakos terminated negotiations on April 5, 2002. Another patent attorney, Thomas Felger, had reviewed the patent, file history, claim scope, and prior art no later than February 2002, before the parties' agreed March 9, 2002 critical date.
Procedural history
Immunocept sued Fulbright on May 6, 2005, alleging legal malpractice under Texas law and invoking 28 U.S.C. § 1338 as the sole jurisdictional basis. The district court granted summary judgment for Fulbright on March 24, 2006, on statute-of-limitations and speculative-damages grounds, and denied Immunocept's Rule 59 motion on May 4, 2006. The Federal Circuit ordered supplemental briefing on its jurisdiction and then affirmed.