Reversing a U.S. District Court’s dismissal of a legal malpractice action for lack of subject-matter jurisdiction, a recent decision by U.S. Court of Appeals for the Federal Circuit remands the malpractice case to district court on the basis that at least one of the plaintiff’s claims requires the court to resolve a substantive issue of patent law. The plaintiff, Warrior Sports, a manufacturer of lacrosse sticks, pursued a legal malpractice matter against their attorneys for mischaracterizing the structure of lacrosse stick to the Patent and Trademark office, and failing to pay a patent maintenance fee causing the patent to lapse. Each of the parties in the matter agreed that the case, Warrior Sports v. Dickinson Wright and John Artz (Fed. Cir 2010-1091), required federal jurisdiction on the basis that U.S.C. § 1338 grants U.S. District Court exclusive jurisdiction over cases arising under a statute relating to patents. The U.S. District Court Eastern District of Michigan disagreed and dismissed Warrior’s lawsuit for lack of subject matter jurisdiction. On appeal, the Federal Court reversed the dismissal in a January 11, 2011 decision and remands the matter back to the district court on the basis that a Michigan malpractice claim arising in patent law should be heard in Federal Court.
In Michigan, legal malpractice has four elements: (1) the existence of an attorney-client relationship; (2) negligence by the attorney in the legal representation; (3) actual injury; and (4) that the negligence was the proximate cause of the injury. To prove the proximate cause and injury elements of its tort claim, Michigan law requires the plaintiff Warrior to show that it would have prevailed on its infringement claim against a competitor stick manufacturer who attempted to take the patent after the lapse, and that the plaintiff would have been entitled to an award of damages as a result. Since at least one of the plaintiff’s malpractice theories requires proof of patent infringement, patent infringement is a necessary element of the plaintiff’s malpractice claim and therefore presents a substantial question of patent law that requires federal jurisdiction.
