California Patent Law

Quick Summary

Federal courts have exclusive jurisdiction over patent claim issues. This includes legal malpractice claims against attorneys who commit errors in a patent application.

Law Review

Landmark Screens v. Morgan, Lewis and Brockius

In Landmark Screens v. Morgan Lewis Brockius, plaintiff Landmark Screens claimed that its attorneys had made mistakes in a patent application. The California court dismissed the lawsuit, ruling that only federal courts could decide the issue. Moreover, since Landmark Screens had by now missed the deadline for filing a federal lawsuit, it had no remedy against its attorneys.

Strategic Note: Defendants were smart for not removing the case to federal court - as they could have done. Instead, they simply moved to dismiss the state case.

The viability of Landmark's action depends on an application of 28 United States Code section 1338 (hereafter, "section 1338?), which grants exclusive jurisdiction to federal courts in patent cases. The scope of this authority was set forth by the United States Supreme Court in Christianson v. Colt Industries Operating Corp. (1998) 486 U.S. 800 (108 S.Ct. 2166) and subsequently refined in Grable & Sons Metal Products, Inc. v. Darue Engineering & Mfg. (2005) 545 U.S. 308 (125 S.Ct. 2363). Accordingly, section 1338 jurisdiction is proper only when "a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff's 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." (Christianson, supra, 486 U.S. at p. 809.) "[T]he question is, does a state-law claim necessarily raise a stated federal issue, actually disputed and substantial, which a federal forum may entertain without disturbing any congressionally approved balance of federal and state judicial responsibilities." (Grable & Sons Metal Products, Inc. v. Darue Engineering & Mfg., supra, 545 U.S. at p. 314.) Worth further noting is "an independent corollary of the well-pleaded complaint rule that a plaintiff may not defeat removal by omitting to plead necessary federal questions in a complaint." (Franchise Tax Bd. of State of Cal. v. Construction Laborers Vacation Trust for Southern California (1983) 463 U.S. 1, 22 [103 S.Ct. 2841].)

Respondents Kohler and MLB have not suggested that Landmark's action arises out of federal patent law; unquestionably legal malpractice is a state law claim. The focus of respondents' opposition is instead on the second prong of the Christianson test, as they maintain that the issues cannot be decided without addressing a substantial question of federal patent law.