United States Court of Appeals

FOR THE DISTRICT OF COLUMBIA CIRCUIT

Argued April 11, 2016 Decided August 12, 2016

No. 14-7126

SEED COMPANY LIMITED AND SHIGERU TAMAI,

APPELLANTS

v.

ANN G. WESTERMAN, AS THE PERSONAL REPRESENTATIVE OF 

THE ESTATE OF WILLIAM F. WESTERMAN, ET AL.,

APPELLEES

Appeal from the United States District Court

for the District of Columbia

(No. 1:08-cv-00355)

Paul T. Meiklejohn argued the cause for appellants. With 

him on the briefs was Creighton R. Magid.

Lance A. Robinson argued the cause for Westerman 

appellees. With him on the briefs were Mark London and 

Christopher Mead.

John P. Glaws IV argued the cause for Kratz appellees. 

With him on the brief was Paul J. Maloney. 

Before: HENDERSON, KAVANAUGH and SRINIVASAN, 

Circuit Judges.
2

Opinion for the Court filed by Circuit Judge SRINIVASAN.

SRINIVASAN, Circuit Judge: This case involves a legal 

malpractice action arising out of an unsuccessful application 

for a patent. Seed Company Limited, a Japanese company, is

led by Shigeru Tamai. Tamai invented a dispenser of 

correctional tape enabling users to correct printed documents 

by rolling white tape over errors. Seed and Tamai hired legal 

counsel in connection with their patent applications. The 

effort to obtain a U.S. patent ultimately failed because of 

counsel’s noncompliance with Patent Office regulations when 

filing a motion related to the application. As a result of the 

error, another inventor obtained the patent for the same 

invention.

Seed and Tamai sued their attorneys, alleging that they 

had committed malpractice when they submitted filings for 

the patent application without complying with the Patent 

Office regulations. The district court first rejected the 

defendants’ argument that the suit was barred by the statute of 

limitations. But the court then granted summary judgment in 

their favor, ruling that they had exercised reasonable 

professional judgment in concluding (erroneously) that their 

filings complied with the Patent Office’s rules. 

We reverse and remand. We conclude that the statute of 

limitations had elapsed with respect to the malpractice claims 

against one group of defendants—those who ceased working 

on behalf of Seed and Tamai when the law firm engaged in 

the representation split into two firms. With regard to the 

remaining defendants—those who continued to represent 

Seed and Tamai after the breakup of the firm—we find that 

the statute of limitations poses no bar to the malpractice 

action. On the merits of the claims against those defendants, 
3

we reverse the grant of summary judgment in their favor and 

remand the case for trial.

I. 

Seed filed three relevant patent applications listing Tamai 

as the inventor: one in Japan, one through the international 

Patent Cooperation Treaty (PCT), and one in the United 

States. The PCT creates an international system for filing 

patents. After filing through the PCT, an inventor can submit 

related national applications in various member countries. 

The dates of the applications were as follows. On July 

31, 1991, Seed filed its Japanese application. The PCT 

application followed, on July 24, 1992. In March 1993, Seed

and Tamai retained legal counsel to pursue a U.S. patent. On 

March 29, 1993, counsel filed a translation of the PCT 

application as Seed’s first U.S. application. On February 15, 

1994, they filed another U.S. application as a continuation-inpart of the first.

On May 9, 1997, the U.S. Patent Office determined that 

another inventor, Christopher J. Stevens, had already patented 

the same invention. The Board of Patent Appeals and 

Interferences thus began interference proceedings to 

determine whether Stevens or Tamai had first invented the 

device. Whoever could show an earlier patent application 

filing date for the same invention (known as a “constructive 

reduction to practice,” 37 C.F.R. § 1.637(f)(3) (1997)) would 

have priority and receive the sole patent on the invention.

Stevens and Tamai each filed a “motion for benefit,” a 

request to credit a U.S. application with the benefit of an

earlier filing date based on a prior patent application for the 

same invention in a different jurisdiction. Stevens relied on 
4

the filing date of his prior United Kingdom patent application. 

Tamai did not oppose Stevens’s motion, and the Board 

granted him an effective filing date of February 10, 1993. 

Tamai relied on the earlier filing dates of Seed’s Japanese and 

PCT patent applications.

The Patent Office had promulgated regulations governing

motions for benefit. When a motion for benefit relied on a 

foreign patent application filed in a language other than 

English, the moving party was required to follow additional 

regulations requiring submission of a translation of the 

foreign application and an affidavit certifying the accuracy of 

the translation. 37 C.F.R. § 1.647 (1997). Both of Seed’s 

earlier patent applications (in Japan and through the PCT) had 

been written in Japanese. Seed’s counsel filed a translation of 

the Japanese application, but they failed to file a translation of 

the PCT application.

Because of the failure to include a translation of the PCT 

application, the Board denied Tamai’s motion for benefit with 

respect to that application. The Board also denied Tamai’s 

motion for reconsideration. Although the Patent Board 

denied the motion for benefit regarding the PCT application, 

it granted the motion with regard to the earlier Japanese 

application. Because the Japanese application (filed on July 

31, 1991) predated Stevens’s United Kingdom application 

(filed on February 10, 1993), the Board granted Tamai 

priority.

Stevens appealed to the Federal Circuit, arguing that the 

Board could not give Tamai the benefit of the Japanese 

application without also crediting the PCT application. 

Stevens relied on a statute specifying that the Board can give 

a patent application the benefit of an earlier application only if 

filed within one year of the prior one. See 35 U.S.C. § 119(a). 
5

Tamai’s Japanese application fell outside that window 

because it predated his U.S. application by more than one 

year. The PCT application in theory could create a chain 

linking the Japanese application to the U.S. application 

without violating the one-year rule because the PCT 

application was filed less than one year before the U.S. 

application and less than one year after the Japanese 

application. But the PCT application had been filed without 

the required translation. Without the PCT application,

Stevens argued, the Japanese application alone was too old.

The Federal Circuit agreed with Stevens and held that the 

Japanese application could not establish an earlier filing date 

without the benefit of the PCT application. Stevens v. Tamai, 

366 F.3d 1325, 1331 (Fed. Cir. 2004). And the court, like the 

Board, held that Tamai could not benefit from the PCT 

application’s filing date because he had failed to file a 

translation of the PCT application. Id. at 1332. The court

therefore remanded to the Board to enter judgment in favor of 

Stevens, id. at 1335, which the Board did.

Meanwhile, between the time of the initial Board 

decision in 2002 and the Federal Circuit appeal in 2004, the 

law firm with which Seed and Tamai’s U.S. counsel had been 

associated had split into two separate firms. Until October 1, 

2003, the attorneys representing Seed and Tamai had been 

doing business as part of one firm. On that date, some of 

those lawyers left the firm to form Westerman, Hattori, 

Daniels, and Adrian LLP. We will refer to them as the 

Westerman defendants. The remaining lawyers founded 

Kratz, Quintos & Hanson LLP. We will call them the Kratz 

defendants. Seed and Tamai (whom we will refer to 

collectively as “Seed” from this point forward) took their

business to the new Westerman firm, which continued to 

represent them during the Federal Circuit appeal.
6

In December 2006, Seed obtained counsel to pursue a 

malpractice suit against the Westerman and Kratz defendants. 

The defendants and Seed entered into tolling agreements

effective May 3, 2007 (for the Westerman defendants), and 

May 10, 2007 (for the Kratz defendants). On February 28, 

2008, Seed brought this malpractice action against the 

Westerman and Kratz defendants.

The complaint, as amended, contains four counts. The 

first two counts, which apply to all defendants, allege that 

they committed malpractice by failing to file the translation of 

the PCT application (and also by giving erroneous advice 

about the implications of Stevens’s appeal to the Federal 

Circuit). The third and fourth counts apply only to the Kratz 

defendants and are contingent on the dismissal of Seed’s 

primary claims under the statute of limitations. The third and 

fourth counts allege that, if the statute of limitations bars the 

primary claims, the Kratz defendants committed malpractice 

by giving Seed erroneous advice about the statute of 

limitations.

Following discovery, the defendants moved for summary 

judgment and Seed moved for partial summary judgment on 

the question of liability. The district court found that the 

statute of limitations did not bar any of the claims. But the 

court granted the defendants’ motion for summary judgment 

on the merits and thus denied Seed’s motion. Because the 

court found no violation of the statute of limitations, it 

dismissed the third and fourth counts as moot. Seed now 

appeals. 

II.

We first consider whether Seed’s claims were brought 

within the statute of limitations, and we then review the grant 

of summary judgment in the defendants’ favor. Before 
7

turning to these matters, however, we briefly address our 

jurisdiction over this appeal. Although no party contests our 

jurisdiction, we have an independent obligation to assure that 

we have it. 

The district court had jurisdiction over this case because 

it meets the requirements for diversity jurisdiction. See 28 

U.S.C. § 1332(a). While the Federal Circuit has exclusive 

jurisdiction over appeals in cases “arising under” federal 

patent law, 28 U.S.C. § 1295(a)(1), “state legal malpractice 

claims based on underlying patent matters will rarely, if ever, 

arise under federal patent law” for purposes of jurisdiction, 

Gunn v. Minton, 133 S. Ct. 1059, 1065 (2013). Gunn 

involved a different federal jurisdictional statute (28 U.S.C. 

§ 1338(a)), but the Court’s guidance about when a case 

“arises under” federal patent law also informs the proper 

interpretation of the statute at issue in this case (28 U.S.C. 

§ 1295(a)(1)), which contains identical operative language. 

See Vermont v. MPHJ Tech. Invs., LLC, 803 F.3d 635, 645-46 

(Fed. Cir. 2015). This case, like Gunn, involves no forwardlooking questions about any patent’s validity, but instead 

solely concerns whether unsuccessful patent applicants can 

recover against their attorneys. We therefore have appellate 

jurisdiction to review the district court’s decision. 28 U.S.C. 

§ 1291.

A.

The threshold question before us is whether the statute of 

limitations bars the malpractice claims against either the 

Westerman defendants or the Kratz defendants. We review 

the application of the statute of limitations de novo. Jung v. 

Mundy, Holt & Mance, P.C., 372 F.3d 429, 432 (D.C. Cir. 

2004). Because we hear this case under diversity jurisdiction, 

we apply the choice-of-law rules of the forum state, here, the 
8

District of Columbia. The District of Columbia in turn

requires us to apply its rules concerning the statute of 

limitations. A.I. Trade Fin., Inc. v. Petra Int’l Banking Corp., 

62 F.3d 1454, 1458 (D.C. Cir. 1995). The burden of proof 

rests with the defendants because the statute of limitations is 

an affirmative defense. Brin v. S.E.W. Inv’rs, 902 A.2d 784, 

800-01 (D.C. 2006).

The statute of limitations for legal malpractice claims in 

the District of Columbia is three years. D.C. Code § 12-

301(8) (2001). The limitations period starts to run when “the 

right to maintain the action accrues.” Knight v. Furlow, 553 

A.2d 1232, 1233-34 (D.C. 1989). The cause of action accrues 

when the would-be plaintiff has knowledge of, or by the 

exercise of reasonable diligence should have knowledge of, 

three items: the injury, its cause in fact, and some evidence of 

wrongdoing. Id. at 1234. At that point, the plaintiff is on 

inquiry notice of the cause of action, and the statute of 

limitations begins to run. Wagner v. Sellinger, 847 A.2d 

1151, 1154 (D.C. 2004). 

Each group of defendants argues that Seed’s claims 

against it are barred by the statute of limitations. The 

Westerman defendants’ tolling agreement with Seed took 

effect on May 3, 2007, and the Kratz defendants’ tolling 

agreement took effect one week later, on May 10, 2007. It is 

undisputed that the agreements tolled the statute of limitations 

from those effective dates until the date of the complaint. The 

question thus is whether the statute of limitations had already 

run by the date the tolling agreements took effect. To show 

that the claims are barred by the statute of limitations, the 

defendants need to demonstrate both that the claims accrued 

more than three years before the tolling agreements and that 

there was no reason to toll the limitations period during those 

three years.
9

Seed contests the defendants’ position on both scores: it

contends that its cause of action accrued within three years of 

the tolling agreements, and it further argues the statute of 

limitations was tolled during the Federal Circuit appeal. With 

regard to the latter argument, Seed relies on the “continuousrepresentation rule.” That rule tolls the statute of limitations 

for a legal malpractice claim during the time the attorney 

continues to represent the client in the relevant matter. The 

rule aims to avoid putting a client in the position of having to 

choose between (i) disrupting an ongoing lawyer-client 

relationship to enable bringing a malpractice claim and (ii)

continuing the relationship but relinquishing the claim. See 

Bradley v. Nat’l Ass’n of Sec. Dealers Dispute Resolution, 

433 F.3d 846, 850 (D.C. Cir. 2005). Under the rule, “when 

the injury to the client may have occurred during the period 

the attorney was retained, the malpractice cause of action does 

not accrue until the attorney’s representation concerning the 

particular matter in issue is terminated.” Id. (quoting R.D.H. 

Commc’ns, Ltd. v. Winston, 700 A.2d 766, 768 (D.C. 1997)).

The district court addressed the application of the statute 

of limitations to the Westerman and Kratz defendants

together, finding that the claims were not time-barred. See 

Seed Co. v. Westerman, 62 F. Supp. 3d 56, 62-65 (D.D.C. 

2014). The court concluded that the claims had accrued by 

March 13, 2003, more than three years before the effective 

date of the tolling agreements. Id. at 63. But the court held 

that the continuous-representation rule tolled the statute of 

limitations. Id. at 63-65. We disagree in part: we conclude 

that the continuous-representation rule applies only to the 

Westerman defendants, not the Kratz defendants, and that the 

first and second counts must therefore be dismissed as they 

apply to the Kratz defendants.
10

1.

Like the district court, we conclude that the statute of 

limitations on the claims against the Westerman defendants 

was tolled while the Westerman firm represented Seed during 

and after the Federal Circuit appeal. The departure of the 

Westerman lawyers to form their own law firm (on October 1, 

2003) did not affect the operation of the continuousrepresentation rule with respect to the Westerman defendants. 

Seed had been notified of the impending split, and, on 

September 9, 2003, its agent sent a letter to the existing firm 

directing that the new Westerman firm would represent it with 

regard to its patent application. After the split, the Westerman 

firm continued to represent Seed in pursuing the patent

(although the Kratz firm did not).

The Westerman defendants argue that the continuousrepresentation rule did not apply during the Federal Circuit 

appeal. We disagree. Although the rule will not always toll 

the statute of limitations during an appeal, it is not 

categorically inapplicable either. At the least, the rule applies 

when the same attorneys continue to represent a client in 

connection with the same matter. See De May v. Moore & 

Bruce, LLP, 584 F. Supp. 2d 170, 183 (D.D.C. 2008). Here, 

the Federal Circuit appeal concerned the same matter for 

which the Westerman defendants had been originally hired: 

procuring Seed’s patent. The same lawyers at the Westerman 

firm continued to represent Seed through the appeal.

Contrary to the Westerman defendants’ argument, this 

court’s decision in Bradley, 433 F.3d 846, did not establish 

that the continuous-representation rule never applies during 

an appeal. Although Bradley observed that the “specific 

dispute” for purposes of the continuous-representation rule 

“does not include appeals,” id. at 851, the case did not involve 
11

a situation in which the same lawyer continued to represent 

the client on appeal. In fact, Bradley did not involve a 

lawyer-client relationship at all. Instead, we assumed that an 

analogous continuous-representation rule would apply to a 

claim alleging malpractice by an arbitration panel assigned to 

resolve the plaintiff’s underlying action; but we held that the 

rule would toll the statute of limitations only until the 

arbitration panel made its decision, not through the appeal of 

that decision in court (at which point the plaintiff of course 

had no ongoing relationship with the arbitral panel). See id. at 

850-51. To the extent Bradley has implications for the 

operation of the continuous-representation rule in the context

of lawyer-client relationships, it did not hold that the rule 

never applies during an appeal, even one handled by the same 

lawyer who represented the plaintiff at trial. See De May, 584 

F. Supp. 2d at 183. Because the relevant appeal here involved

a continued representation by the same lawyers in the same 

matter, we hold that the continuous-representation rule tolled 

the statute of limitations during the appeal.

Seed and the Westerman defendants also disagree about 

when the claims against the Westerman defendants accrued. 

We need not resolve the dispute, because, even under the 

Westerman defendants’ view, the claims against them were 

timely filed. They argue that the claims accrued on March 13, 

2003, when the Patent Board denied Tamai’s request for 

reconsideration. The Westerman tolling agreement took 

effect on May 3, 2007. Seed’s complaint therefore was timely 

as long the statute of limitations was tolled until at least May 

3, 2004 (three years before the tolling agreement took effect). 

The Westerman defendants continued to represent Seed well 

past May 3, 2004: at that point, the Federal Circuit had yet to 

issue its decision. As a result, the claims against the 

Westerman defendants were brought within the statute of 

limitations.
12

2.

We reach a different conclusion with regard to the claims 

against the Kratz defendants. The Kratz defendants’ tolling 

agreement took effect on May 10, 2007. We find that the 

continuous-representation rule did not toll the statute of 

limitations for the claims against them at any point in the 

three-year period from May 2004 to May 2007. We further 

hold that the claims accrued before May 10, 2004. The 

claims against the Kratz defendants are therefore barred by 

the statute of limitations.

We join other courts in holding that the continuousrepresentation rule does not toll the statute of limitations on a 

claim against a firm after the attorney providing the 

representation leaves the firm and takes the client’s business 

with her. See Dunn v. Rockwell, 689 S.E.2d 255, 275 (W. Va. 

2009); Beal Bank, SSB v. Arter & Hadden, LLP, 167 P.3d 666 

(Cal. 2007). In that situation, the client is no longer 

represented by the original firm. The continuousrepresentation rule thus no longer tolls the statute of 

limitations for malpractice claims against that firm. That 

conclusion accords with the underlying objectives of the rule: 

“avoid[ing] unnecessarily disrupting the representation in 

which the error occurred” and giving the firm “the 

opportunity to remedy, avoid or establish that there was no 

error or attempt to mitigate the damages.” R.D.H. Commc’ns, 

700 A.2d at 769 (quotation omitted). The rule cannot guard 

against unnecessary disruption of ongoing representations or 

encourage lawyers to correct their mistakes after the client has 

already taken its business to a new firm. See Beal Bank, 167 

P.3d at 671.

Consequently, the continuous-representation rule cannot 

save Seed’s claims against the Kratz defendants. By the fall 
13

of 2003, the Kratz defendants had formed their own firm and 

no longer represented Seed in pursuing the patent application

at issue in this case: Seed’s agent confirmed in writing on 

September 9, 2003, that the patent case was “entrusted to” the 

Westerman firm. J.A. 576. As a result, if the claims accrued 

sometime before May 10, 2004, then more than three years 

would have elapsed before the May 10, 2007, effective date of 

the tolling agreement, and the claims would be time-barred. 

The Kratz defendants argue that the claim accrued at the 

latest on May 4, 2004, the date of the Federal Circuit’s 

decision against Seed. We agree. After the Federal Circuit 

issued its decision directing the Patent Board to enter 

judgment against Seed, Seed should have known that it would 

be denied its patent (an injury) because of the failure to 

include a translation of the PCT application (a cause in fact 

attributable to the defendants). Seed presses two responses, 

neither of which persuades us.

Seed’s first argument is that its claim did not accrue until 

September 14, 2004, when the Board entered its post-appeal 

judgment on remand from the Federal Circuit. The Federal 

Circuit, however, directed the Patent Board to enter judgment 

against Seed, see 366 F.3d at 1335, so there was no ambiguity 

about what would happen on remand. Seed relies on Wagner, 

in which the District of Columbia Court of Appeals held that 

a client does not suffer an injury triggering the statute of 

limitations at the moment her attorney errs during discovery 

or trial. Wagner, 847 A.2d at 1156. But Wagner held only 

that the injury arises when the trial court resolves the case, not 

that any injury awaits final resolution of an appeal. See id. at 

1156-57. This court has already rejected a reading of Wagner 

that would require “exhaustion of appeals” before the statute 

of limitations begins to run. Bradley, 433 F.3d at 852. And 

the District of Columbia Court of Appeals similarly rejected 
14

an exhaustion-of-appeals rule in its pre-Wagner cases. R.D.H. 

Commc’ns, 700 A.2d at 771. The “lingering hope” that an 

appellate ruling might lead to a different outcome on remand 

is “irrelevant for purposes of determining” the date the statute 

of limitations begins to run based on inquiry notice. Bradley, 

433 F.3d at 852. 

Seed next claims it did not realize that the Federal Circuit 

decision meant it had lost its patent claim. It contends that, 

even after the Federal Circuit issued its decisions, the 

Westerman defendants continued to represent that Seed could 

receive a patent by contesting the Federal Circuit decision. 

Seed relies on a letter dated May 5, 2004, in which the 

Westerman defendants presented a number of possible ways 

to deal with the adverse decision, including by petitioning for 

rehearing or for review in the Supreme Court. The letter 

acknowledged that those options were unlikely to succeed,

but it held open the possibility.

We conclude that Seed had inquiry notice of an injury

upon receiving the Federal Circuit decision. The Federal 

Circuit instructed the Patent Board “to enter judgment for 

Stevens” (and thus against Tamai) on remand. Stevens, 366

F.3d at 1335. At most, the Westerman defendants’ advice 

could have convinced a reasonable party in Seed’s position 

that there existed some chance the injury could be resolved in 

further appeals. But no reasonable client could conclude that 

the possibility of redressing an injury in further proceedings

means that no injury exists in the first place.

Seed thus had inquiry notice of its claim against the Kratz 

defendants by May 4, 2004, more than three years before the 

effective date of their tolling agreement. Consequently, the 

first and second counts against the Kratz defendants were 

barred by the statute of limitations.
15

3.

We finally consider the application of the statute of 

limitations to the third and fourth counts in the complaint, i.e., 

the contingent claims concerning the Kratz defendants’ advice 

about the statute of limitations for the claims alleged in the 

first and second counts. Seed contends that it sought advice 

in 2005 from James Armstrong, a member of the Kratz firm, 

about the accrual date for its first two malpractice claims. 

Armstrong suggested that those claims had ripened on either 

June 10, 2004 or October 18, 2004, such that they would have 

been timely when filed. Seed’s claims of malpractice based 

on that advice about the statute of limitations is contingent on 

its loss of the first two counts on statute of limitations 

grounds. 

The district court did not dismiss the first two counts on 

statute-of-limitations grounds; it dismissed them on the 

merits. Because the third and fourth counts were contingent

on the dismissal of at least one of the first two counts on 

statute-of-limitations grounds, the court found that the third 

and fourth counts were moot. But because we have now 

concluded that the claims against the Kratz defendants are 

barred by the statute of limitations, the contingent counts must 

be adjudicated. We remand for the district court to adjudicate 

them in the first instance. 

B.

Having concluded that the statute of limitations poses no 

bar to the claims against the Westerman defendants, we turn 

to considering whether those claims survive summary 

judgment. We review grants and denials of summary 

judgment de novo. Fenwick v. Pudimott, 778 F.3d 133, 136 
16

(D.C. Cir. 2015); George v. Leavitt, 407 F.3d 405, 410 (D.C. 

Cir. 2005).

Seed’s claims in this case arise under District of 

Columbia law. That law requires a plaintiff to establish three 

elements to state a claim of malpractice: “the applicable 

standard of care, a breach of that standard, and a causal 

relationship between the violation and the harm complained 

of.” Biomet Inc. v. Finnegan Henderson LLP, 967 A.2d 662, 

664 (D.C. 2009). The standard of care in a legal malpractice 

case is the “degree of reasonable care and skill expected of 

lawyers acting under similar circumstances.” Morrison v. 

MacNamara, 407 A.2d 555, 561 (D.C. 1979). Specialists 

must “adhere to a standard of conduct commensurate with” 

their “special training and experience.” O’Neil v. Bergan, 452 

A.2d 337, 341 (D.C. 1982) (quoting Morrison, 407 A.2d at 

560). 

The District of Columbia applies the judgmentalimmunity doctrine, under which “an informed professional 

judgment made with reasonable care and skill cannot be the 

basis of a legal malpractice claim.” Biomet, 967 A.2d at 666. 

The Westerman defendants argue that their decision fell 

within the protections of the judgmental-immunity doctrine. 

The district court agreed and granted them summary 

judgment. To affirm, we would need to find no genuine 

dispute of material fact about either of the elements of the 

doctrine: “that (1) the alleged error is one of professional 

judgment, and (2) the attorney exercised reasonable care in 

making his or her judgment.” Id.; see Fed. R. Civ. P. 56(a). 

Because we find a genuine issue as to both, we reverse the 

grant of summary judgment.
17

1.

We first examine if there is any genuine issue about 

whether the Westerman defendants’ error in failing to file a 

translation with the PCT application was one of professional 

judgment. All parties agree that Tamai needed the benefit of 

the PCT application’s filing date to establish priority over

Stevens in the patent interference proceeding. See p. 5, supra. 

The question thus becomes what the Westerman defendants

needed to do to get Tamai the benefit of the PCT application’s 

filing date. 

The Patent Office had promulgated two pertinent rules. 

First, Rule 637 stated that a motion for benefit must serve all 

opponents with copies of the relevant earlier application, and 

must, “[i]f the earlier filed application is not in English,” 

comply with Rule 647. 37 C.F.R. § 1.637(f)(2). Rule 647, in 

turn, provides that “[w]hen a party relies on a document or is 

required to produce a document in a language other than 

English, a translation of the document into English and an 

affidavit attesting to the accuracy of the translation shall be 

filed with the document.” Id. § 1.647. When the Westerman 

defendants filed Tamai’s motion for benefit, however, they 

included neither a translation of the PCT application nor an 

affidavit attesting to its accuracy. Stevens, 366 F.3d at 1328. 

As a result, if a reasonable lawyer would have known that 

getting the benefit of the PCT filing date would require

complying with Rules 637 and 647, the Westerman 

defendants’ failure to abide by those rules could not have 

been an exercise of professional judgment.

The Westerman defendants respond that they reasonably 

believed Rules 637 and 647 did not pertain to PCT 

applications. Rule 637 applies only to “earlier filed 

application[s].” 37 C.F.R. § 1.637(f)(2). The Westerman 
18

defendants argue that, when they filed the motion for benefit 

in 1997, a reasonable lawyer could have thought that PCT 

applications designating the United States did not count as 

“earlier filed application[s]” in subsequent national 

applications. They rely on the Manual of Patent Examining 

Procedure, which as of 1997 stated that a PCT application 

was not a separate application but rather an earlier “stage” of 

the American application which automatically shared the 

same filing date. Manual of Patent Examining Procedure 

§ 1893.03(b) (6th ed., Rev. 2, July 1996); see 35 U.S.C. § 363 

(1997) (amended 2011). The manual thus directed applicants 

“not [to] claim benefit of the filing date of the international 

application” in a national application. Manual of Patent 

Examining Procedure § 1893.03(c). The Westerman 

defendants argue that the manual reflected a reasonable belief 

among patent lawyers in 1997: because Rule 637 applied to 

motions for benefit and the Westerman defendants did not 

believe they needed to file a motion for benefit for the PCT 

application, they concluded that the translation requirements 

in Rules 637 and 647 did not apply to the PCT application.

We conclude that Seed raises a genuine dispute of 

material fact about whether the defendants’ decision could 

have been characterized as an exercise of professional 

judgment in 1997. Although the manual provides some 

evidence in support of the defendants’ claim, Seed also cites

evidence supporting its position. Drawing all inferences in 

favor of Seed, we conclude that a factfinder could find the 

Westerman defendants’ choice unreasonable.

First, ambiguity about the applicability of the rules’ 

translation requirement to PCT applications does not 

necessarily support the defendants’ claim that they exercised 

judgment in failing to file a translation. Typically, the 

judgmental-immunity doctrine applies when a lawyer makes a 
19

strategic choice between two options, each of which has costs 

and benefits. For example, in Biomet, the defendant lawyer 

had to decide which arguments to include in the limited space 

in his appellate brief. 967 A.2d at 666. But an attorney does 

not exercise professional judgment when she interprets 

unsettled law in a way that “manifestly risk[s] the loss of [a] 

client’s claims” for no plausible advantage. Skywark v. 

Isaacson, 202 B.R. 557, 564 (S.D.N.Y. 1996). A factfinder 

could infer that a reasonable lawyer would err on the side of 

caution by filing the translation if the requirements were 

ambiguous and there were no reason not to do so.

Second, the Westerman defendants’ actions did not align 

with their purported understanding of the requirements. The 

defendants’ claimed interpretation—in which an American 

application based on a PCT application was not a separate 

application at all—is belied by the fact that they filed a 

motion for benefit regarding the PCT application. The 

regulation authorizing motions for benefit referenced “an 

earlier filed application” just like Rule 637, and it directly 

referred readers to Rule 637. 37 C.F.R. § 1.633(f) (1997). If 

the Westerman defendants in fact had thought that the PCT 

application was not an “earlier filed application”—but rather 

an automatically credited earlier stage of the same 

application—there would have been no need to file a motion 

for benefit at all. But they did file a motion for benefit, and in 

the title of that document, they called the PCT application an 

“earlier filed application” and referenced Rule 637. J.A. 947. 

A reasonable factfinder could infer that the exercise of 

professional judgment could not lead to the Westerman 

defendants’ seemingly odd hybrid strategy: electing to file a 

motion for benefit but without following the proper 

procedures for such a motion.
20

Moreover, Seed introduced an affidavit from an expert 

attesting that a reasonable patent lawyer in 1997 would have 

understood the regulations to require the filing of a translation

in connection with a motion for benefit related to a PCT 

application. Any other understanding of the regulations 

would make little sense, Seed contends: it would call for the 

Board to decide in an interference proceeding whether a PCT 

application written in a foreign language patented the same 

invention as the one claimed by the other party, but to do so 

without a translation of the relevant application. And 

although the Federal Circuit’s 2004 decision in Stevens would 

not necessarily speak to the state of the law in 1997, Stevens 

characterized the application of Rules 637 and 647 to PCT 

applications as “very clear.” 366 F.3d at 1335. 

For those reasons, we conclude Seed has raised a genuine 

dispute of material fact about the requirements a reasonable 

patent lawyer would have thought relevant to claiming the 

benefit of a prior PCT application in 1997. Whether the 

Westerman defendants exercised professional judgment in 

choosing not to file a translation is a question for the finder of 

fact.

Finally, we briefly address the Westerman defendants’ 

claim that they thought they did file a translation. In their

view, they exercised their professional judgment in 

concluding that the American application itself would qualify

as a translation of the PCT application. But even if the 

American application in fact was a translation of the PCT 

application, the opposing party and the Patent Office would 

not have known it because the American application was not 

filed as a translation and included no affidavit attesting to its 

accuracy. At the very least, a factfinder could conclude that 

no lawyer exercising professional judgment would have 
21

considered a document entirely unidentified as a translation to

somehow satisfy a translation requirement.

2.

Seed next argues that the defendants failed to exercise 

reasonable care in making the decision not to file the 

translation. To fall under the judgmental-immunity doctrine, 

the lawyer must “undertak[e] reasonable research of the 

relevant legal princip[les] and facts of the given case.” 

Biomet, 967 A.2d at 666 (quotation omitted). It is not enough 

to “characteriz[e] an act or omission as a matter of judgment.” 

Id. (quotation omitted). 

The Westerman defendants have introduced no evidence 

of their deliberative process in reaching the decision not to

file the translation. They have produced no research, 

memoranda, or other internal correspondence about the 

applicability of Rules 637 and 647 to PCT applications. Nor 

have they submitted any affidavits about their consideration 

of such questions. Although the absence of evidence is not 

necessarily dispositive, it at least permits a factfinder to draw 

an inference that the Westerman defendants did not exercise 

reasonable care. That sort of reasonable inference makes 

summary judgment for the defendants inappropriate in this 

case.

3. 

Seed argues that, not only was it wrong to grant summary 

judgment in favor of the defendants, but summary judgment 

should have been granted in favor of Seed. Although we do 

not think the Westerman defendants are entitled to summary 

judgment when we weigh the evidence in Seed’s favor, we 

similarly do not think Seed is entitled to summary judgment 
22

when we make the opposite inferences. The Westerman 

defendants raise a genuine dispute of material fact about 

whether they could have reasonably thought that Rules 637 

and 647 did not apply to PCT applications. The resolution of 

that dispute is for the factfinder at trial.

III.

Finally, two of the Westerman defendants argue that they 

should be dismissed from the case. Edward Kenehan and the 

Westerman firm are listed as defendants only for the second 

count of the complaint, which alleges that they gave Seed

erroneous advice about the strength of its arguments in the 

Federal Circuit appeal. The district court found that Seed had 

withdrawn its second count because it had conceded that there 

were no damages stemming from the second count in 

particular. Kenehan and the Westerman firm moved to be 

dismissed from this appeal because the district court had 

found, based on Seed’s concession, that any claims against 

them were moot. Seed responds that the defendants’ 

understanding of its concession is too broad. In Seed’s view, 

the second count contained two types of damages: damages 

from not accepting a settlement, and damages from 

underestimating the importance and finality of the Federal 

Circuit appeal, delaying their discovery of their malpractice 

claims. Seed admits that it conceded the first type of 

damages, but not the second. 

We decline to resolve those issues at this stage. Because 

the district court found that the claims were brought within 

the statute of limitations, it had no occasion to consider 

whether the second count alleges damages stemming from 

appellants’ failure to pursue their malpractice claims sooner 

due to the defendants’ erroneous advice about the significance 

of the Federal Circuit appeal (and, if it does, whether Seed
23

waived those damages as well). Our decision requires 

answers to those questions: if the allegations in the complaint 

cover such a claim and Seed did not concede it, Seed could 

seek damages based on the Westerman defendants’ faulty 

advice about the timing of its (now dismissed) claims against 

the Kratz defendants. We remand to the district court to 

interpret the complaint in the first instance and decide 

whether Seed waived any remaining claims against Kenehan 

and the Westerman firm.

* * * * *

We hold that the first and second counts of the complaint 

should be dismissed against the Kratz defendants as barred by 

the statute of limitations, and we remand for further 

proceedings on the contingent third and fourth counts. With 

regard to the Westerman defendants, we reverse the district 

court’s grant of summary judgment on the first and second 

counts and remand for further proceedings. We also remand 

for the district court to decide whether Edward Kenehan and 

the Westerman firm should be dismissed from the suit.

So ordered.