UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

WARRIOR SPORTS, INC.,

a Michigan corporation,

Plaintiff, No. 09-12102

Hon. Gerald E. Rosen

v.

DICKINSON WRIGHT, P.L.L.C., a Michigan

Professional Limited Liability Company;

JOHN A. ARTZ, P.C., d/b/a ARTZ & ARTZ,

P.C., a Michigan Professional Corporation;

JOHN A. ARTZ and JOHN S. ARTZ,

Defendants.

_____________________________________ /

ORDER DENYING DEFENDANT DICKINSON WRIGHT’S

MOTION FOR RECONSIDERATION

At a session of said Court, held in

The U.S. Courthouse, Detroit, Michigan

on October 30, 2009 

PRESENT: Honorable Gerald E. Rosen

Chief Judge, United States District Court

This legal malpractice action is presently before the Court on Defendant Dickinson

Wright, P.L.L.C.’s (“Dickinson Wright”) Motion for Reconsideration of the Court’s July

10, 2009 Opinion and Order which dismissed without prejudice the action for lack of

subject matter jurisdiction. Dickinson Wright contends that the Court’s Order contains a

“palpable error” in that it states that the underlying patent issues do not appear to be

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“actually disputed and substantial.”

The grounds for the granting of motions for reconsideration are set forth in Eastern

District of Michigan Local Court Rule 7.1(g)(3):

Generally, and without restricting the court's discretion, the court will not

grant motions for rehearing or reconsideration that merely present the same

issues ruled upon by the court, either expressly or by reasonable

implication. The movant must not only demonstrate a palpable defect by

which the court and the parties have been misled but also show that

correcting the defect will result in a different disposition of the case.

The Court has reviewed Dickinson Wright’s Motion for Reconsideration in this

case and finds that the firm has merely presented the same issues already ruled upon by

the Court in its July 10, 2009 Order. 

Title 28 U.S.C. § 1331 vests in federal district courts “original jurisdiction” over

“all civil actions arising under the Constitution, laws, or treaties of the United States.”

When a case does not present either federal question jurisdiction or diversity jurisdiction,

it should be dismissed for lack of subject matter jurisdiction. See Fed. R. Civ. P.

12(b)(1), 12(h)(3). A case “arises under” federal law for purposes of exercising federal

question jurisdiction if the “well-pleaded complaint establishes either that federal law

creates the cause of action or that the plaintiff's right to relief necessarily depends on

resolution of a substantial question of federal law.” Franchise Tax Bd. v. Constr.

Laborers Vacation Trust, 463 U.S. 1, 27- 28, 103 S. Ct. 2841, 2856 (1983). In addition,

in certain cases, “federal-question jurisdiction will lie over state-law claims that implicate

significant federal issues.” Grable & Sons Metal Products, Inc. v. Darue Engineering &

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Mfg., 545 U.S. 308, 312, 125 S. Ct. 2363, 2367 (2005). To determine whether a case fits

“within th[is] special and small category,” Empire Healthchoice Assurance, Inc. v.

McVeigh, 547 U.S. 677, 699, 126 S. Ct. 2121, (2006), “the question is, does a state-law

claim necessarily raise a stated federal issue, actually disputed and substantial, which a

federal forum may entertain without disturbing any congressionally approved balance of

federal and state judicial responsibilities.” Grable, 545 U.S. at 314.

Here, Plaintiff Warrior Sports, Inc. has filed a state-law legal malpractice claim,

stemming from the conduct of the defendant attorneys and law firm in an underlying

patent law case. The parties do not argue that Plaintiff’s legal malpractice claim qualifies

as a “cause of action created by federal law.” Instead, they argue that the state-law case

nevertheless arises under federal law for § 1331 purposes because federal patent law is a

necessary element of Plaintiff’s claim for relief. That is, under Michigan law, a plaintiff

claiming professional malpractice must show, inter alia, that the attorney’s conduct was

the proximate cause of the plaintiff’s injuries. This, the parties argue, necessarily forces

the Court to determine the validity or likelihood of success of Plaintiff’s underlying

patent claims: the so-called case-within-a-case. Based solely on this analytical

framework, Dickinson Wright now makes much of the disputed patent issues in the

lawsuit that gave rise to this malpractice claim. Although Dickinson Wright may have

provided the Court with new details about the depth or contentiousness of those patent

disputes, its arguments remain unresponsive to the issue presently before the Court. 

Specifically, upon close examination of Plaintiff’s complaint, it is apparent that Plaintiff

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does not seek determination of infringement or claim construction issues; rather, it alleges

straight-forward claims of professional negligence, a squarely state-law cause of action. 

The underlying patent issues—including inequitable conduct, claim construction and

infringement—may well be complex. Nevertheless, they remain only a sub-inquiry,

incidental to Plaintiff’s primary allegations against the defendant attorneys. Moreover,

those primary allegations revolve exclusively around missed filing deadlines, failure to

communicate and professional negligence. As such, even if the allegations touch upon

patent issues or require assessment of underlying patent disputes, they hardly raise

substantial questions of federal law. In light of the foregoing, the Court cannot see how it

may adjudicate this case without disturbing the congressionally approved balance of

federal and state judicial responsibilities. See Grable, 545 U.S. at 314. Using Michigan’s

case-within-a-case analytical framework to sweep an entire class of state-law claims into

federal law’s preemptive reach would unavoidably result in a case of the tail wagging the

dog.

Furthermore, Dickinson Wright’s renewed reliance on case law from the Court of

Appeals for the Federal Circuit does not demonstrate palpable error in the July 10, 2009

Order. The parties have shown no case law, and this Court has found none, to indicate

that the Federal Circuit’s decisions with respect to its own subject matter jurisdiction over

state-law claims are binding on this Court. While the Federal Circuit appears to have no

reservations about exercising its power over underlying patent issues as leverage to reach

purely state-law causes of action, see Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403,

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 Moreover, the Federal Circuit itself has not shown tremendous consistency in its

analysis of these types of jurisdictional questions. Compare Consolidated World

Housewares, Inc. v. Finkle, 831 F.2d 261, 265 (Fed. Cir. 1987) (holding that even if a

contract action may involve a determination of the true inventor, this does not convert the

action into one “arising under” the patent laws), with Additive Controls & Measurement

Systems, Inc. v. Flowdata, Inc., 986 F.2d 476, 478-79 (Fed. Cir. 1993) (holding that a

state-law business disparagement claim “arises under” federal patent law because the

plaintiff’s right to relief depends upon the resolution of patent infringement issues). 

5

1412-13 (Fed. Cir. 2009), Air Measurement Technologies, Inc. v. Akin Gump Strauss

Hauer & Feld, LLP, 504 F.3d 1262 (Fed. Cir. 2007), reh'g and reh'g en banc denied,

(Fed. Cir. 2008), and Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281

(Fed. Cir. 2007), this Court remains wary of such an open-ended analysis of federal

question jurisdiction.1

 Simply put: there is no “‘single, precise, all-embracing’ test for

jurisdiction over federal issues embedded in state-law claims between non-diverse

parties.” Grable, 125 S. Ct. at 2368 (quoting Christianson v. Colt Indus. Operating Corp.,

486 U.S. 800, 821, 108 S. Ct. 2166 (1988) (Stevens, J., concurring)). In Touchcom, Air

Measurement, and Immunocept, the Federal Circuit appears to impose precisely such an

all-embracing test, effectively aggregating ever greater swaths of state-law claims into its

jurisdictional sweep. Yet, this alone cannot render its decisions with respect to subject

matter jurisdiction binding on this Court. To argue otherwise is to beg the question; in

order to accept that Federal Circuit decisions concerning the scope of subject matter

jurisdiction are binding in this case, the Court must accept that all legal malpractice

claims premised on underlying patent issues are in fact patent law cases. Because the

Court does not accept this basic premise, Dickinson Wright is left with the circular

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argument that, “This is a patent law case, because the Federal Circuit has decided that it is

a patent law case; and the Federal Circuit has decided that it is a patent law case, because

it is a patent law case.” Obviously, this is not persuasive.

Turning to other federal circuits, several courts have declined to reach underlying

federal law issues for purposes of exercising federal question jurisdiction in legal

malpractice actions outside the patent law context. For example, in Singh v. Duane

Morris LLP, 538 F.3d 334, 340 (5th Cir. 2008), the Fifth Circuit held that a legal

malpractice claim growing out of a federal trademark dispute, in which the client claimed

the attorney was negligent for failing to introduce certain evidence, did not involve a

“substantial” federal question, even if it might involve consideration of federal trademark

law. The court explained that in spite of Texas law’s case-within-a-case framework for

legal malpractice claims, the federal issue—whether the plaintiff had sufficient evidence

that his trademark had acquired secondary meaning—though obviously significant to the

plaintiff’s claim, did not require “resort to the experience, solicitude, and hope of

uniformity that a federal forum offers.” Id. at 339 (quoting Grable, 545 U.S. at 315). The

court further stated that “[l]egal malpractice has traditionally been the domain of state

law, and federal law rarely interferes with the power of state authorities to regulate the

practice of law.” Id. Similarly, in Hays v. Bryan Cave LLP, 446 F.3d 712, 713-14 (7th

Cir. 2006), the Seventh Circuit held that the plaintiff's allegation that his lawyers and law

firm provided deficient representation in the course of a federal criminal case was an

insufficient basis for removal from state court. Even though the plaintiff’s complaint

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required a determination of the meaning and scope of the federal criminal statutes under

which he had been convicted in the underlying suit—indeed state law mandated a casewithin-a-case analysis, such that the plaintiff would have to show that his damages were

proximately caused by the attorneys’ breach—those issues remained “independent of the

law under which the suit that the defendant lawyer is alleged to have muffed was

brought.” Id. at 714. The court explained:

Issues concerning the meaning of that [federal] law are quite likely to arise

in such a malpractice action, but there is nothing unusual about a court

having to decide issues that arise under the law of other jurisdictions;

otherwise there would be no field called “conflict of laws” and no rule

barring removal of a case from state to federal court on the basis of a

federal defense. Mentioning a federal issue in a contract, or for that matter

a complaint, does not determine the source of the claim itself.

Id. (internal citations and quotation omitted); but see Achtman v. Kirby, 464 F.3d 328,

335-36 (2nd Cir. 2006) (finding “supplemental jurisdiction” over legal malpractice action

arising out of separate earlier securities class action suit).

The Sixth Circuit has not had occasion to address this jurisdictional question in a

legal malpractice context, but it has made clear that state-law claims arising out of prior

federal lawsuits do not generally warrant the exercise of federal question jurisdiction. In

Palkow v. CSX Transportation, Inc., 431 F.3d 543, 544 (6th Cir. 2005), the court

evaluated a case arising out of an earlier federal lawsuit in which the plaintiff, Ms.

Palkow, claimed that she was terminated from her probationary employment as a railroad

conductor trainee because of her sex in violation of Title VII of the Civil Rights Act of

1964. Id. In the underlying federal case, the jury found in favor of the defendant

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employer. Id. Ms. Palkow then filed a second complaint in state court claiming that

under state law her former co-worker committed perjury when she testified on behalf of

the defendant employer in the federal suit, and she claimed that the co-worker’s perjured

testimony affected the outcome of the jury verdict in the federal trial. Id. at 544-45. The

defendant employer and the co-worker removed the case to the federal district court that

had held the original jury trial, arguing that Ms. Palkow’s state court action in reality

constituted an attack on the federal jury verdict and resulting judgment, and that it was

essentially an end-run around Rule 60 of the Federal Rules of Civil Procedure. Id. at 545. 

On appeal from the district court’s order granting the defendant employer’s motion to

dismiss on the merits, the Sixth Circuit found that there was nothing on the face of Ms.

Palkow’s Complaint which established federal subject matter jurisdiction. Id. at 548. 

Citing Long v. Bando Manufacturing of America, Inc., 201 F.3d 754 (6th Cir.2000), in

which the court found that there was no federal question jurisdiction in a wrongful

discharge action based in part on alleged violation of federal policies, the Sixth Circuit in

Palkow concluded that “[t]he only ‘federal’ aspect of Plaintiff's civil perjury claim is the

fact that the alleged perjury occurred in a federal court action. [Thus] [t]here is no ‘federal

question’ that needs to be resolved in order to resolve Plaintiff's state-law claim.” Id. at

553-54. Ultimately, the court emphasized that “[a]ny notion that the jurisdictional net

should be broadly cast by the courts is at odds with the constitutional establishment of a

federal government of limited powers.” Id. at 555. See also Eastman v. Marine

Mechanical Corp., 438 F.3d 544, 552-53 (6th Cir. 2006) (holding that employee’s stateCase 2:09-cv-12102-GER-DAS Document 24 Filed 10/30/2009 Page 8 of 10
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law retaliatory discharge claim, identifying federal statutes as sources of allegedly

violated public policy, did not raise a substantial federal question over which the court

could exercise removal jurisdiction); Berg v. Leason, 32 F.3d 422, 423 (9th Cir. 1994)

(holding that no substantial federal question was raised in a state-law malicious

prosecution claim based on a prior federal action).

Having reviewed the relevant federal case law, the Court declines to follow the

Federal Circuit, finding instead that in this case Plaintiff’s legal malpractice claim

stemming from representation in a prior federal suit does not raise substantial questions of

federal law. The only federal aspects of Plaintiff’s claim—patent disputes embedded

within the proximate cause element of an otherwise straightforward legal malpractice

claim—are only incidental to the overall complaint. Moreover, using the case-within-acase framework as leverage to extend federal jurisdiction to every instance in which a

lawyer commits alleged malpractice during the litigation of a federal claim would

“constitute a substantial usurpation of state authority in an area in which states have

traditionally been dominant.” Singh, 538 F.3d at 340. Because the Court is not

persuaded that the federal interest in adjudicating patent cases in particular warrants such

an intrusion, it concludes that Plaintiff’s malpractice claim does not “arise under” federal

law. Therefore,

IT IS HEREBY ORDERED, ADJUDGED AND DECREED that Defendant

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 Because the Court’s July 10, 2009 Order dismissing this case without prejudice

constitutes a final order, the Court does not address Dickinson Wright’s request in the

alternative for certification of an appeal under 28 U.S.C. § 1292(b). This action was an

original federal court action, rather than a motion for remand. Therefore, the strictures of

28 U.S.C. § 1447 do not apply to it. It is up to the parties to proceed as they choose. 

However, the Court notes that pursuant to 28 U.S.C. § 1291, the federal courts of appeal,

other than the Court of Appeal for the Federal Circuit, generally have appellate

jurisdiction from a final judgment in the district courts. The Court of Appeals for the

Federal Circuit only has appellate jurisdiction from a final judgment of a district court, if

the jurisdiction of that court was based, in whole or in part, on 28 U.S.C. § 1338. See 28

U.S.C. § 1295(a)(1). Section 1338 grants the district courts original jurisdiction over any

civil action arising under any Act of Congress relating to patents. 28 U.S.C. § 1338.

However, as the Court noted in its July 10, 2009 Order, where as here the Court finds that

it does not have section 1338 jurisdiction over this case, it appears that the Court’s

decision is reviewable in the court of appeals for the circuit embracing this district: the

United States Court of Appeals for the Sixth Circuit. See 28 U.S.C. § 1294. Of course,

the decision on whether to appeal and to which court is entirely up to the parties—with all

the risks attendant thereto.

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Dickinson Wright's Motion for Reconsideration be, and hereby is, DENIED.2

s/Gerald E. Rosen 

Chief Judge, United States District Court

Dated: October 30, 2009

CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing document was served upon counsel of record on

October 30, 2009, by electronic and/or ordinary mail.

s/Ruth A. Brissaud 

Case Manager

(313) 234-5137

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