UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
____________________________________
)
ANTIBALLISTIC SECURITY AND )
PROTECTION, INC, et al., )
)
Plaintiffs, )
)
v. ) Civil Action No. 09-02443 (ABJ)
)
BAKER, DONELSON, BEARMAN, )
CALDWELL & BERKOWITZ, PC, et al., )
)
Defendants. )
____________________________________)
MEMORANDUM OPINION
Plaintiffs Antiballistic Security and Protection, Inc. (“ASAP”), James Quinn, and Gale
Leslie Quinn (collectively “plaintiffs”) bring this action for legal malpractice and breach of
fiduciary duty against a law firm, Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
(“Baker Donelson”) and one of its shareholders, Susan McBee (collectively “defendants”).
Defendants have moved to dismiss under Fed. R. Civ. P. 12(b)(1) for lack of subject matter
jurisdiction and Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief can be
granted. Since plaintiffs assert federal jurisdiction based solely upon 28 U.S.C. § 1331, but the
case does not involve the application of federal patent law, the Court will dismiss plaintiffs’
claims for lack of subject matter jurisdiction.
I. Background
The relevant facts as alleged in plaintiffs’ complaint are as follows. ASAP is in the
business of making, selling, and installing light weight walls that protect against explosives,
ballistic attack, and forced entry. Compl. ¶ 4. Plaintiffs James Quinn and Gale Leslie Quinn are
ASAP’s president and secretary-treasurer, respectively. Compl. ¶¶ 5–6. In April 2003, plaintiffs
retained defendant Susan McBee1 to represent them as their attorney with respect to patent
matters. Compl. ¶ 9.
Between July 2003 and May 2004, McBee filed three provisional applications for patents
in the United States on behalf of plaintiffs, and the United States Patent and Trademark Office
(“USPTO”) issued provisional application numbers for each patent. Compl. ¶¶ 10–13. On July
1, 2004, McBee filed a non-provisional application with the USPTO (the “U.S. Application”)
that claimed priority from the provisional applications. Compl. ¶ 14.
Also on July 1, 2004, pursuant to the Patent Cooperation Treaty (the “PCT”), 28 U.S.T.
7647 (Jan. 24, 1978), McBee filed with the World Intellectual Property Organization
International Bureau an international patent claiming priority from the three U.S. provisional
applications (the “PCT Application”). Compl. ¶ 13. The PCT Application was substantially
identical to the U.S. Application. Compl. ¶ 14.
After filing the PCT Application, McBee worked with plaintiffs to prepare and file
various foreign applications. Under PCT provisions and Canadian law, ASAP allegedly had 30
months from filing the first U.S. provisional application—until January 1, 2006—within which
to file the “national stage” application in Canada. Plaintiffs could extend the filing period under
certain circumstances for one year, to January 1, 2007. Compl. ¶ 15.
On November 5, 2005, ASAP allegedly instructed McBee to file a national stage
application in Canada and requested cost estimates for the filings. Compl. ¶ 16. Jim Quinn then
spoke with a patent agent employed by McBee on December 19, 2005 about delaying the
Canadian filing under the one year grace period that McBee had explained would still protect
1 At the time, McBee was not a member of defendant Baker Donelson but was instead
employed by another law firm. Compl. ¶ 9.
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ASAP’s rights. On December 27, 2005, Leslie Quinn instructed McBee to file the Canadian
national stage application within the one year grace period. Compl. ¶ 18.
On January 6, 2006, McBee joined Baker Donelson and soon agreed to perform all the
patent work for ASAP at her new firm. Compl. ¶ 19. In February 2007, McBee left Baker
Donelson to join another firm. During that time, plaintiffs discovered that nobody had filed a
national stage application in Canada despite plaintiffs’ instructions to defendants to do so before
the one year grace period expired on January 1, 2007. Plaintiffs then retained Canadian counsel
to persuade the Canadian Intellectual Property Office and Canadian courts that they had acted in
a timely fashion, but on December 10, 2008, the Canada Federal Court of Appeal ruled against
plaintiffs.2 Compl. ¶ 24.
The next day, December 11, 2008, the USPTO allowed all of the 93 claims in the patent
application filed by plaintiffs and on April 21, 2009, issued U.S. Patent No. 7,520,205. Compl. ¶
26.
On December 30, 2009, plaintiffs brought this action against defendants for legal
malpractice and breach of fiduciary duty for defendants’ failure to timely file the national stage
application in Canada. Defendants moved to dismiss the claims under Fed. R. Civ. P. 12(b)(1)
for lack of subject matter jurisdiction and under Fed. R. Civ. P. 12(b)(6) for failure to state a
claim upon which relief can be granted.
II. Standard of Review
In evaluating a motion to dismiss under either Rule 12(b)(1) or 12(b)(6), the Court must
“treat the complaint’s factual allegations as true . . . and must grant plaintiff ‘the benefit of all
inferences that can be derived from the facts alleged.’” Sparrow v. United Air Lines, Inc., 216
2 In November 2008 McBee returned to Baker Donelson. Compl. ¶ 25.
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F.3d 1111, 1113 (D.C. Cir. 2000) (quoting Schuler v. United States, 617 F.2d 605, 608 (D.C. Cir.
1979) (citations omitted)). Nevertheless, the Court need not accept inferences drawn by the
plaintiff if those inferences are unsupported by facts alleged in the complaint, nor must the Court
accept plaintiff’s legal conclusions. Browning v. Clinton, 292 F.3d 235, 242 (D.C. Cir. 2002).
Under Rule 12(b)(1), plaintiff bears the burden of establishing jurisdiction by a
preponderance of the evidence. See Lujan v. Defenders of Wildlife, 504 U.S. 555, 561 (1992);
Shekoyan v. Sibly Int’l Corp., 217 F. Supp. 2d 59, 63 (D.D.C. 2002). Federal courts are courts of
limited jurisdiction and the law presumes that “a cause lies outside this limited jurisdiction.”
Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S. 375, 377 (1995); see also Gen. Motors
Corp. v. EPA, 363 F.3d 442, 448 (D.C. Cir. 2004) (“As a court of limited jurisdiction, we begin,
and end, with examination of our jurisdiction.”). Because “subject-matter jurisdiction is ‘an
Art[icle] III as well as a statutory requirement . . . no action of the parties can confer subject-
matter jurisdiction upon a federal court.’” Akinseye v. District of Columbia, 339 F.3d 970, 971
(D.C. Cir. 2003) (quoting Ins. Corp. of Ireland v. Compagnie des Bauxites de Guinee, 456 U.S.
694, 702 (1982)).
Moreover, unlike when deciding a motion to dismiss under Rule 12(b)(6), the court “is
not limited to the allegations of the complaint . . . .” Hohri v. United States, 782 F.2d 227, 241
(D.C. Cir. 1986), vacated on other grounds, 482 U.S. 64 (1987). Rather, a court “may consider
such materials outside the pleadings as it deems appropriate to resolve the question whether it
has jurisdiction to hear the case.” Scolaro v. D.C. Bd. of Elections & Ethics, 104 F. Supp. 2d 18,
22 (D.D.C. 2000) (citing Herbert v. Nat’l Acad. of Sciences, 974 F.2d 192, 197 (D.C. Cir.
1992)); see also Jerome Stevens Pharms., Inc. v. FDA, 402 F.3d 1249, 1253 (D.C. Cir. 2005).
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III. The Court Lacks Jurisdiction Under 28 U.S.C. § 1338(a)
Plaintiffs assert jurisdiction in this Court under 28 U.S.C. § 1331 “because the claims
arise under Federal law, namely 28 U.S.C. § 1338, which confers exclusive jurisdiction on the
federal courts over civil actions arising under any Act relating to patents.” Compl. ¶ 2.
Defendants counter that the Court lacks jurisdiction under this statute because plaintiffs’ cause of
action is simply a legal malpractice action that may raise questions involving Canadian patent
application procedures, but not United States patent law. Def.’s Mot. to Dismiss at 5. The Court
agrees.
Federal courts have exclusive jurisdiction over actions “arising under any Act of
Congress relating to patents . . . .” 28 U.S.C. § 1338(a). A federal court’s jurisdiction under
section 1338(a) includes cases “in which 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 v. Colt Indus. Operating Corp., 486
U.S. 800, 809 (1988). The Supreme Court later explained the Christianson test to be a
determination of whether “a state-law claim necessarily raise[s] 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 Prods., Inc. v. Darue Eng'g & Mfg., 545 U.S. 308, 314 (2005) (emphasis added). Such
federal jurisdiction demands both a contested and substantial federal issue. Id. (“It has in fact
become a constant refrain in such cases that federal jurisdiction demands not only a contested
federal issue, but a substantial one, indicating a serious federal interest in claiming the
advantages thought to be inherent in a federal forum.”).
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Here, federal patent law does not create either of plaintiff’s causes of action, which are
state law claims for legal malpractice and breach of fiduciary duty. So jurisdiction depends on
whether patent law is a necessary element—actually disputed and substantial—of one of the
well-pleaded claims.
Plaintiffs’ claims for legal malpractice3 and breach of fiduciary duty4 arise under District
of Columbia law. Plaintiffs allege that they had an attorney-client relationship with defendants
and that defendants negligently breached their duty as counsel by failing to timely file the
Canadian application. Similarly, plaintiffs allege that defendants owed them a fiduciary duty
arising out of attorney-client relationship and that defendants breached that duty by failing to file
and prosecute the Canadian application. In other words, plaintiffs’ entire complaint arises out of
the alleged failure to file a timely PCT application in Canada. Under the case-within-a-case
doctrine that pertains in legal malpractice cases, plaintiffs’ claims necessarily depend on whether
the Canadian patent would have issued but for defendants’ negligence. See Bleck v. Power, 955
A.2d 712, 716 n.9 (D.C. 2008) (“[T]he predicate of the case-within-a-case methodology [for
proving malpractice] is ascertaining what the result ‘should have been.’”) (quoting Ronald E.
Mallen & Jeffrey M. Smith, Legal Malpractice § 23:12 at 390 (2011)).
Plaintiffs argue, then, that since the ultimate issuance of the Canadian patent would have
depended, at least in part, upon whether the United States patent application was successful, the
3 To succeed on a legal malpractice claim under District of Columbia law, plaintiffs must
show that (1) the defendant was employed as the plaintiff's attorney, (2) the defendant breached a
reasonable duty, and (3) that breach resulted in, and was the proximate cause of, the plaintiff's
loss or damages. Martin v. Ross, 6 A.3d 860, 862 (D.C. 2010).
4 To prove a breach of fiduciary duty under District of Columbia law, plaintiffs must prove
(1) the existence of a fiduciary duty, (2) a breach of the duties associated with that relationship,
and (3) injuries that were proximately caused by the breach of the fiduciary duty. Armenian
Genocide Museum & Memorial, Inc. v. The Cafesijian Family Found., Inc., 607 F. Supp. 2d 185,
190–91 (D.D.C. 2009).
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action raises a substantial question of federal patent law. Pls.’ Opp. to Mot. to Dismiss (“Pls.’
Opp.”) at 6. But as the complaint alleges, the U.S. patent was in fact issued. Compl. ¶ 26. Since
that is a matter of public record that is not in dispute, the resolution of this case will not require a
determination of the patentability of the underlying invention in the United States. So there is no
question of federal patent law for this court to resolve at all—much less a substantial one. While
as plaintiffs point out, some cases alleging legal malpractice by patent lawyers may entail the
resolution of issues of patent law, see, e.g., Air Measurement Technologies, Inc. v. Akin Gump
Strauss Hauer & Feld, LLP, 504 F.3d 1262 (Fed. Cir. 2007); Immunocept, LLC v. Fulbright &
Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. 2007), the mere fact that the foreign patent would have
been predicated on the issuance of a patent here is insufficient without more to confer federal
jurisdiction in this case. The Supreme Court has made it clear that it is not enough for a state-
law claim to implicate a federal issue: the federal issue must be actually disputed and substantial
before jurisdiction will attach. Grable & Sons, 545 U.S. at 313–14 (recognizing that courts have
been “shying away from the expansive view that mere need to apply federal law in a state-law
claim will suffice to open the ‘arising under’ door”). See also Empire Healthchoice Assurance
Inc. v. McVeigh, 547 U.S. 677, 699–701 (2006) (declining to exercise federal question
jurisdiction where the federal statute was not a central issue and emphasizing that federal
jurisdiction under Grable is limited to a “special and small category” of cases).
This conclusion is consistent with Davis v. Brouse McDowell, LPA, 596 F.3d 1355 (Fed.
Cir. 2010), cited by the defendants. In Davis, the Federal Circuit assessed whether the federal
district court had jurisdiction over a case in which the plaintiff sued for legal malpractice arising
out of her attorneys’ failure to timely file a foreign PCT application and for negligence in
connection with a United States patent application. Id. at 1360. The court held that the federal
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court had jurisdiction under section 1338(a) over the negligence claims related to the United
States patent application because the plaintiff was bound to prove that she would have obtained
the patents but for defendants’ negligence. Because the patentability of plaintiff’s invention was
controlled by United States patent law, the court held that patent law was a necessary element of
her legal malpractice claim. Id. at 1361–62. However, the court also noted that “[i]t is
undisputed that [plaintiff’s] allegations relating to the PCT applications do not raise any issue of
U.S. patent law.” Id. at 1360.
Here, the fact that the U.S. Application had not been granted at the time of the alleged
malpractice makes little difference to the analysis. The U.S. Application was granted in its
entirety on all claims, and the patent issued as originally filed without any cancelled, changed or
amended claims. Compl. ¶ 26; Pls.’ Opp. at 6. The gravamen of plaintiffs’ claims is not the
patentability of the inventions in the United States, but whether defendants’ negligence
prevented plaintiffs from obtaining a Canadian patent. As a result, the only substantial and
disputed issues arise under Canadian law and District of Columbia law, not federal law. Because
there is no contested and substantial federal issue raised in plaintiffs’ complaint, plaintiffs have
failed to meet their burden to demonstrate that the Court has jurisdiction under 28 U.S.C.
§1338(a).
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IV. Conclusion
For the foregoing reasons, and in reliance upon the motion, the opposition, and the entire
record of this case, the Court will grant defendants’ motion to dismiss and plaintiffs’ complaint
will be dismissed for lack of subject matter jurisdiction. A separate order will issue.
/s/
AMY BERMAN JACKSON
United States District Judge
DATE: June 7, 2011
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