# United States Court of Appeals

FOR THE DISTRICT OF COLUMBIA CIRCUIT

Argued April 11, 2016 Decided August 12, 2016

No. 14

- 7126

S EED C OMPANY L IMITED AND S HIGERU T AMAI
, A PPELLANTS

v.

A NN G. W ESTERMAN
, AS THE PERSONAL REPR ESENTATIVE OF

THE ESTATE OF W ILLIAM F. W ESTERMAN
, ET AL
., A PPELLEES

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: H ENDERSON
, K AVANAUGH and S RINIVAS AN
, Circuit Judges

.2

Opinion for the Court filed by Circuit Judge S RINIVASAN

.

S RINIVASAN

, 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 application s

. The
effort to obtain a U.S. patent ultimately failed because of
counsel’s noncompliance with Patent Office regulations when
fil ing 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 i nto 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 internatio nal Patent Cooperation Treaty (PCT ), and one in the United
States. The PCT creates an internatio nal system for filing patents. A fter 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, couns el filed a translation of the PCT application as Seed’s first U.S. application

. On February 15, 1994, t hey filed another U.S. application as a continuation

- in

part of the first.

On May 9, 1997, the U.S. Patent Office determined that another inventor, Chr istopher 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 appl ication 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 on4

the filing dat e 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 Japanes e and PCT patent applications.

Th e 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 su bmission of a translation of the foreign application and an affidavit certifying the accuracy of
the trans lation. 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 trans lation of the PCT application.

Because of the failure to include a translation of the PCT application, the Board denied Tamai’s motion for benefit wi th 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 ap plication (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 Japane se 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

- yea r 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. W ithout the PCT application,
Steve ns 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 s plit into two separate firms. Until October 1, 2003, the attorneys representing Seed and Tamai had b een doing business as part of one firm

. On that date, some of those lawyers left the firm t o form Westerman, H attori, Daniels, and Adria n LLP. We will refer to them as the
Westerman defendants . The remaining lawyers founde d Kratz, Quintos & Hanson LLP. W e 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 th e 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 agreem ents 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 tha t, if the statute of limitations bar s the primary claims, the Kratz defendants committed malpractice by giving Seed erroneous advice ab out the statute of
limitations.

Following discovery, the defendants moved for summary judgment and Seed moved for partia l 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 defendant s ’ motion for summary judgment
on the merits and thus denied Seed ’s motion . Becau se the
court found no violation of the statute of limitations, it
dismissed the third and fourth counts as moot. Seed now appeal s

. 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. Bef ore7

turning to these matters, h o w ever, we briefly address our jurisdiction over this appe al. 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). Wh ile 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” fo r purposes of jurisdiction

, Gunn v. Minton , 133 S. Ct. 1059, 1065 (2013). Gunn
involved a different federal juri sdictional 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 G unn , involves no forward

looking questions about any patent’s validity, but instead solely concerns whether unsuccessful patent applicant s can recover against their attorneys. We therefore have appel late jurisdiction to review the district court’s decision. 28 U.S.C. § 1291.

A.

The t hreshold 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, the8

District of Columbia . The District of Columbia in turn requires us to apply its rules concerni ng 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’r s , 90 2 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 evid ence 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 i s whether the statute of limitations had already run by the date the tolling agreements took effect. T o show
that the claims a re barred by the statute of limitations, the
defendants need to demonstrate both that the claims accrued more than three years before the tol ling agreements and that
there wa s no reason to toll the limitations period during those three years

.9

Seed contest s the defendants’ position on both scores: it
contend s that its cause of action accrued within three years of the tolling agreements , and it further argue s the statute of limitations was tolled during the Federal Circuit appeal

. With regard to the latter argument, Seed relies on the “continuous

representation rule.” That rule tolls the statute of limitations
for a legal malpractice claim during the time the attorney continues to re present the client in the relevant matter

. The

r ule 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 relinquish ing the claim

. See Bradley v. N at ’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 attorn ey’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

- 6 5 (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 t o 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 continuous

representation rule with respect to the Westerman defendants

. Seed had been notified of the impending spl it, 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 continuous

representation rule d id 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 sa me 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 decisio n 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 involve11

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 a ppeal 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 con tinued 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 th e 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
reconsiderat ion. The Westerman tolling agreement took
ef

fect 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 c ourts in holding that the continuous

representation 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

re presented by the original firm. The continuous

representation rule thus no longer tolls the statute of
limitatio ns 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 a fter 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 fall13

of 2003 , the Kratz defendants had formed their own firm and no longer represented Seed in p ursuing the patent application
at issue in this case : Seed’s agent confi rmed in writing on September 9, 2003, that the patent case was “ entrusted to” the
Westerman firm. J.A. 576. As a result, i f 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
la test 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

.

Se ed’s first argument is that its claim did not accrue until Sept ember 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 a ttorney 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. Se e 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 rejected14

an exhaustion

- of

- appeals rule in its pre

- W agner 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 claim s it did not realize that the F ederal Circuit
decision meant it had lost its patent claim

. It contend s 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 th e 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 ope n the possibility.

We conclude that Seed had inquiry notice of an injury

up on receivi ng 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 133 5

. 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 Kr atz 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 contend s that it sought advice in 2005 from James Armstrong, a member of the Kratz firm,
about the accrual date for its first two ma lpractice claims. Armstrong sugg ested 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 claim s of malpractice based
on that advice about the statute of limitations is conti ngent 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 l east one of the first two counts on

statute

- of

- limitations grounds , the court found that the third
and fourth counts were moot. But b ecause we have now concluded that the claims against the Kratz defendant s are barred by the statut e of limitations , the contingent counts must be adjudicated . We remand for the district court to adjudicate
them in the first inst ance.

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, 13616

(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 standa rd 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 judgmental

immunity doctrine, under which “an informed p rofessional 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 protection s 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 b enefit 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 Of fice 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. 3 7 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 t he 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 n or 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 Westerman18

defendants arg ue that, when they filed the motion for benefit in 1997, a reasonable lawyer c ould 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 Manua l 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 Proce dure § 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: b ecause Rule 637 applied to
motions for benefit and the Westerman defendants did not believe they needed to file a motion f or 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 raise s 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 cite s evide nce 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 applicatio ns 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 a19

strategic choice between two options, each of which has costs

an d 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 a n 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 translati on 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 bel ied 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
th e 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 profess ional 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 contend s : 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 releva nt application . And although the Federal Circuit’s 200 4 decision in Stevens would not necessarily speak to the state of the law in 1997, Stevens
chara cterized the appli cation of Rules 637 and 647 to P CT applications as “v ery 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 claim ing the benefit of a prior PCT application in 1997. Whether the
Westerman defendants ex ercised professional j udgment 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 profe ssional judgment in concluding that the American application itself would qualify as a translation of the PCT application. But ev e n if the American application in fact was a translation of the PCT application, the opposing party and the Patent Office woul d

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 pr ofessional judgment would have21

considered a document entirely unidentified as a translation to somehow satisfy a translation requirement.

2

.

Seed next argue s 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. Alth ough 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 argue s that, not only was it wrong to grant summar y judgment in favor of the defendants , but summary judgment
should ha ve 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 judgment22

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 fir m 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 respond s 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 a dmit s 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 a lleges 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 Seed23

waived those damages as well)

. Our decision requ ires 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) cla im s again st 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 sec ond 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. W e also remand
for the district court to decide whether Edward Kenehan and
the Westerman firm should be dismissed from the suit.

So ordered.