SW Legal studies in Business

Cases Involving Patent Validity Issues Must Be in Federal Court
Description Appeals court held that a suit that involved patent validity and patent infringement must be in federal court. There were other issues involved, but the patent issued required jurisdiction to be federal.
Topic Intellectual Property
Key Words Patents; Infringement; Malpractice; Jurisdiction
C A S E   S U M M A R Y
Facts Stumberg developed a safety device for firemen. He formed the company AMT to market the technology and hired attorney Hamilton, who worked at the Akin Gump firm, to secure patent protection. Hamilton obtained several patents. Ten years later, AMT sued SCBA for patent infringement in federal court in Texas. The suits were settled for about $10 million. During the litigation, AMTís new counsel discovered significant errors Hamilton allegedly made during patent filing that could invalidate the patents. AMT sued Akin Gump in Texas state court for malpractice, negligence, and breach of fiduciary duties; all claims made under state law. AMT claimed it had to settle the litigation with SCBA for less than it could have, but was afraid the problems in the patent could cost them the litigation. Akin moved the case to federal court, claiming that resolution of the suit required questions of patent law, which is federal law. AMT challenged the removal and filed a motion to send the case back to state court. The federal judge rejected that motion; AMT appealed.

Affirmed. The patent aspects of the malpractice claim favor federal jurisdiction. The fact that AMT must prove patent infringement (by SCBA) confers jurisdiction under federal patent laws regardless of what defenses Akin may have to the other claims. If the patents are valid; AMT has no claim against Akin. Since the case rests on the validity of the patents, this requires, for the other issues to be reached, determinations to be made about the patents. Hence, the federal court must hear the case.

Citation Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir., 2007)

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