Patent Malpractice CanConfer Federal Subject Matter Jurisdiction

Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P.,
[2007-1035](October 15, 2007)[MICHEL, Lourie, Rader] The Federal Circuit affirmed the district court's decision not to remand a malpractice case that raised a substantial question of patent law.
BRIEF: In the course of enforcing patents it had obtained, AMT discovered a number of alleged errors committed by defendants, including: that their attorney (1) failed to file the initial patent application within the one year ‘on sale bar’ of 35 U.S.C. § 102(b); (2) failed to disclose two prior patents and other facts during the prosecution of the patent applications; (3) failed to file in a timely fashion the application that resulted in the ’771 patent, which contains the broadest claims to the invention; (4) miscalculated the settlement damages in the prior litigation; (5) failed to inform AMT of his mistakes despite his fiduciary duty to do so; (6) failed to inform AMT adequately of the existence of the prior litigant’s defenses of on sale bar and inequitable conduct; and (7) made misrepresentations to AMT. The Federal Circuit said that Because the underlying suit here is a patent infringement action against SCBA defendants, the district court will have to adjudicate, hypothetically, the merits of the infringement claim. Because proof of patent infringement is necessary to show AMT would have prevailed in the prior litigation, patent infringement is a "necessary element" of AMT’s malpractice claim and therefore apparently presents a substantial question of patent law conferring § 1338 jurisdiction.