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.

_____________________________________ /

OPINION AND ORDER FOR DISMISSAL WITHOUT PREJUDICE

At a session of said Court, held in

The U.S. Courthouse, Detroit, Michigan

on July 10, 2009 

PRESENT: Honorable Gerald E. Rosen

Chief Judge, United States District Court

On June 10, 2009, this Court issued an Order to Show Cause in this legal

malpractice action directing Plaintiff Warrior Sports, Inc. (“Warrior”) to show cause why

this case should not be dismissed without prejudice for lack of subject matter jurisdiction. 

Both Warrior and Defendant Dickinson Wright, P.L.L.C. (“Dickinson Wright”) filed

answers to the order on June 22, 2009, arguing that federal subject matter jurisdiction is

proper under 28 U.S.C. § 1338. 

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 The “Artz” defendants reached a tentative settlement with Warrior on June 15,

2009.

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 John A. Artz and John S. Artz developed a relationship with Warrior when they

were employed by the law firm Brooks & Kushman, P.C. They retained Warrior as a

client when they left Brooks & Kushman to form their own firm, John A. Artz, P.C.,

doing business as Artz & Artz, P.C. Finally, the Artz firm merged with Dickinson Wright

in June 2007. The attorney-client relationship between Warrior and John A. Artz and

John S. Artz continued throughout these transitions and existed as of the filing of

Warrior’s Complaint in this case. Warrior’s claims against Dickinson Wright are rooted

in a theory of successor liability.

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I. FACTUAL AND PROCEDURAL BACKGROUND

Plaintiff Warrior Sports, Inc. has brought this action against Defendants Dickinson

Wright, John A. Artz, P.C., John A. Artz, and John S. Artz alleging legal malpractice.1

 

Warrior manufactures lacrosse and hockey equipment. It owns patent RE 38,216 for a

lacrosse stick head (“the ‘216 patent”). Defendants John A. Artz and John S. Artz, first at

the firm Brooks & Kushman, then Artz & Artz, P.C., and finally at Dickinson Wright,

provided Warrior with primary legal services in the speciality of patent law and related

litigation.2

 In its Complaint, Warrior claims that Defendants (1) failed to pay a

maintenance fee resulting in the lapse of Warrior’s patent, (2) forced Warrior to settle

previous litigation on terms Warrior considers unfavorable, (3) failed to timely effectuate

the reinstatement of Warrior’s patent, and (4) committed sundry other breaches of their

professional duties, the precise contours of which breaches are not altogether clear from

the Complaint. As a result, Warrior claims it has suffered damages in the form of a

diminished settlement with its competitor, lost royalties for the period in which the patent

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was lapsed, and lost profits.

The case was originally filed in Wayne County Circuit Court. Warrior then

voluntarily transferred the case to Macomb County Circuit Court after Defendants moved

for a change of venue. Dickinson Wright, believing that recent case law established

exclusive federal jurisdiction over patent malpractice cases, moved for summary

disposition for lack of subject matter jurisdiction in the state court. Warrior re-filed its

case in this Court and voluntarily dismissed the state court case. 

The issue is whether Plaintiff’s state law claims of legal malpractice may fairly be

characterized as raising federal patent law questions. Warrior asserts that this Court has

jurisdiction as “[t]he controversy involves determination of issues involving application

of patent law and substantial questions relating to patent law.” (Pl.'s Compl. ¶ 6.) In other

words, Warrior brings this action in this Court on the basis of federal question jurisdiction

under 28 U.S.C. § 1338. Dickinson Wright argues that “because this case involves

substantive questions of federal patent law . . . [the] state courts in this federal circuit

have and will continue to defer to this jurisdiction.” (Def. Dickinson Wright’s Resp. to

Ct.’s June 10, 2009 Order to Show Cause 9.) 

II. LEGAL STANDARD - SUBJECT MATTER JURISDICTION

The federal courts are courts of limited jurisdiction; they have only such

jurisdiction as is defined by Article III of the United States Constitution and granted by

Congress. Gross v. Hougland, 712 F.2d 1034, 1036 (6th Cir. 1983). Federal courts have

a duty to consider their subject matter jurisdiction in regard to every case and may raise

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the issue sua sponte. See In re Lewis, 398 F.3d 735, 739 (6th Cir. 2005).

Federal district courts have original jurisdiction of civil actions “arising under” any

federal statute relating to patents. 28 U.S.C. § 1338. District court jurisdiction under 

§ 1338(a) extends “only to those cases in which a well-pleaded complaint establishes

either that federal patent law creates the cause of action or that the plaintiff's right to relief

necessarily depends on resolution of a substantial question of federal patent law, in that

patent law is a necessary element of one of the well-pleaded claims.” Christianson v.

Colt Indus. Operating Corp., 486 U.S. 800, 809, 108 S. Ct. 2166 (1988). The Sixth

Circuit has explained that the “seemingly amorphous ‘substantial question of federal

patent law’ component of the [Christianson] test merely makes clear that a plaintiff

cannot avoid federal patent jurisdiction by leaving out an element necessary to the

success of his claim, any more than a plaintiff can create federal jurisdiction by including

extraneous references to federal law.” E.I. Du Pont de Nemours & Co. v. Okuley, 344

F.3d 578, 581–82 (6th Cir. 2003).

The Supreme Court later elaborated that in order for federal question jurisdiction

to lie in the case of a state law claim, a plaintiff's well-pleaded complaint must

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

forum may entertain without disturbing any congressionally approved balance of federal

and state judicial responsibilities.” Grable & Sons Metal Prods., Inc. v. Darue Eng'g &

Mfg., 545 U.S. 308, 314, 125 S. Ct. 2363 (2005).

III. DISCUSSION

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In the present case, Warrior’s well-pleaded complaint alleges one count of legal

malpractice, a state law cause of action. Both parties nevertheless argue that the

resolution of Warrior’s claims necessarily requires the Court to address questions of

federal patent law. The parties cite two cases from the U.S. Court of Appeals for the

Federal Circuit in which the court, interpreting Christianson, found § 1338 jurisdiction

over state-law legal malpractice claims because those claims also involved substantial

federal patent law questions: 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). Warrior and Dickinson Wright contend that the present case is

comparable because, under Michigan law, Warrior will have to show that its underlying

patent infringement claims would have been resolved more favorably in the absence of

Defendants’ malpractice. They reason that consideration of the underlying patent claims

in turn implicates substantial questions of patent law. This Court finds the parties’

arguments unpersuasive: although a court may indeed have to consider underlying matters

related to federal patent law, these issues do not appear “actually disputed and

substantial,” and the parties have not provided sufficient cause why this Court should

disturb the balance between federal and state judicial responsibilities.

In Michigan, a legal malpractice claim requires a showing of (1) the existence of

an attorney-client relationship; (2) negligence in the legal representation of the plaintiff;

(3) that the negligence was a proximate cause of an injury; and (4) the fact and extent of

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 In Coleman, the Michigan Supreme Court ultimately concluded that for purposes

of establishing venue, “[t]he ‘suit within a suit’ . . . is not a part of a legal malpractice

action in and of itself. A legal malpractice action and the litigation or representation from

which it arose, of course, are distinct.” Coleman, 503 N.W.2d at 438.

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the injury alleged. Coleman v. Gurwin, 503 N.W.2d 435, 436–37, 443 Mich. 59, 63,

(Mich. 1993). To establish proximate cause, a plaintiff in a legal malpractice action must

show that but for the attorney's alleged malpractice, the plaintiff would have been

successful in the underlying suit. Id. at 437. However, Michigan courts have also held:

[this] “suit within a suit” concept has vitality only in a limited number of

situations, such as where an attorney's negligence prevents the client from

bringing a cause of action (such as where he allows the statute of limitations

to run), where the attorney's failure to appear causes judgment to be entered

against his client or where the attorney's negligence prevents an appeal from

being perfected. This is so because the purpose of the suit-within-a-suit

requirement is to insure that the damages claimed to result from the

attorney's negligence are more than mere speculation.

Id. (internal citations and quotations omitted).3

Interpreting similar elements under Texas law, the Federal Circuit in Immunocept

and Air Measurement, found that two legal malpractice claims involved substantial

questions of federal patent law because the court would have to reach the underlying

patent litigation disputes to determine proximate cause. In Air Measurement, the plaintiff

company alleged that its attorney failed to timely file initial patent applications and failed

to disclose prior patents and other facts during the prosecution of those patent

applications. Air Measurement, 504 F.3d at 1266. Because proof of patent infringement

was necessary to show that the attorney proximately caused the plaintiff damages, the

court concluded that patent law was a “necessary element” of the plaintiff’s malpractice

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 Dickinson Wright argues that these Federal Circuit cases are binding on this

Court. Although the Court of Appeals for the Federal Circuit has exclusive jurisdiction

over patent appeals, 28 U.S.C. § 1295(a)(1), it is unclear whether its decisions with

respect to the scope of federal jurisdiction in patent-related matters bind federal courts. 

See Holmes Group Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826, 829–30, 122

S. Ct. 1889 (2002). Indeed, the Federal Circuit’s appellate jurisdiction is limited to cases

in which the district court’s decision was “based, in whole or in part, on section 1338,” 28

U.S.C. § 1295(a)(1). Logically, the Federal Circuit’s appellate jurisdiction is not

necessarily implicated where a district court finds that it has no section 1338 jurisdiction

altogether. Nevertheless, the Court declines to address this issue here where it finds that

the present case is sufficiently distinguishable from these Federal Circuit precedents. It

notes however that the cases cited by Dickinson Wright in this regard do not support its

argument. 

In particular, Dickinson Wright cites one unpublished case from the Eastern

District of Kentucky, Byrne v. Wood, Herron & Evans, L.L.P., No. 08-102-DCR, 2008

WL 3833699 (E.D. Ky. Aug. 13, 2008), in which the court ultimately followed the

reasoning set out in Immunocept and Air Measurement. The opinion however does not

alone stand for the proposition that Federal Circuit precedent is binding as to

jurisdictional questions. The remaining cases cited by Dickinson Wright are from the

Federal Circuit and are not directly responsive to this issue. See Midwest Industries, Inc.

v. Karavan Trailers, Inc., 175 F.3d 1356, 1358–60 (Fed. Cir. 1999), overruled in part by

Traffix Devices v. Mktg. Displays, 532 U.S. 23, 121 S. Ct. 1255 (2001) (holding that the

Federal Circuit applies its own law with respect to patent law issues, applies the law of

the circuit in which the district court sits to non-patent issues, but not specifying whether

subject matter jurisdiction is a patent or non-patent issue); Minnesota Min. & Mfg. Co. v.

Norton Co., 929 F.2d 670, 672 (Fed. Cir. 1991) (reversing district court decision

dismissing action for declaratory judgment, where dismissal was granted on discretionary

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claim and therefore presented a substantial question of patent law conferring § 1338

jurisdiction. Id. at 1269. Similarly, in Immunocept, the plaintiff company alleged that its

attorney inadequately drafted a patent, thereby reducing the scope of the patent’s

protection. Immunocept, 504 F.3d at 1284. The court held that because patent scope was

the “sole basis of negligence,” and the scope of patent protection is a substantial question

of federal law, this underlying determination was sufficient basis to establish § 1338

jurisdiction. Id. at 1285.4

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grounds in light of pending interference proceedings and declaratory judgment action

involved matters of importance in development of patent law); Goodyear Tire & Rubber

Co. v. Releasomers Inc., 824 F.2d 953, 954 (Fed. Cir. 1987) (reversing district court

decision and holding that case or controversy requirement had been met in action seeking

declaratory judgment on validity, enforceability, and non-infringement of patents). 

Dickinson Wright finally cites Murata Mfg. Co., Ltd. v. Bel Fuse, Inc., 422 F. Supp. 2d

934, 938 (N.D. Ill. 2006), in which the court simply stated that Federal Circuit opinions

are binding on substantive patent law questions, but was silent with respect to Federal

Circuit authority as to jurisdictional questions.

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In this case, unlike Immunocept and Air Measurement, Warrior’s claim that

Defendants’ negligence caused Warrior to settle under less favorable terms, lose profits

and lose royalties based on the lapsed patent, does not necessarily require a court to

engage in claim construction, evaluate the viability of underlying patent litigation, or

determine if others are infringing the patent in question. Warrior’s claim is simply that

Defendants failed to timely file maintenance fees, failed to fully communicate with their

client, and failed to effectuate timely reinstatement of the lapsed patent. These, and the

sundry other breaches allegedly committed, seem readily addressed without reference to

actual substantive and disputed questions of patent law. Furthermore, the issues

implicated in the underlying disputes—maintenance fees and timeliness of reinstatement

proceedings—do not appear to be matters of importance in the development of patent

law. 

In Adamasu v. Gifford, Krass, Groh, Sprinkle, Anderson & Citkowski, P.C., 409

F. Supp. 2d 788, 792 (E.D. Mich. 2005), the court reached a similar conclusion. In that

case, the plaintiff inventor alleged that the defendant law firm and attorney committed

malpractice in their representation of him before the United States Patent and Trademark

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Office. Defendants filed a notice of removal from state court on the basis of § 1338

jurisdiction, claiming that the plaintiff’s case in chief required a showing that he would

have lost royalties and licensing fees in the absence of defendants’ negligence. Adamasu, 

409 F. Supp. 2d at 792. The court rejected this position outright: “Simply because . . .

defendants rendered advice on a matter governed by federal law and prosecuted a patent

through a federal agency does not constitute an issue that ‘aris[es] under any Act of

Congress relating to patents,’ as 28 U.S.C. § 1338 requires.” Id. Just as in the present

case, the “heart” of the plaintiff’s case was his attorney’s negligence and not the scope of

the claims in plaintiff’s patent or potential infringement of the patent by users of the

invention. 

Finally, the Court notes the general principle that federal statutes regulating the

jurisdiction of federal courts must be narrowly construed. Healy v. Ratta, 292 U.S. 263,

269, 54 S. Ct. 700 (1934).

The power reserved to the states, under the Constitution (Amendment 10),

to provide for the determination of controversies in their courts, may be

restricted only by the action of Congress in conformity to the judiciary

sections of the Constitution (article III). Due regard for the rightful

independence of state governments, which should actuate federal courts,

requires that they scrupulously confine their own jurisdiction to the precise

limits which the statute has defined.

Id. (citations omitted). Although the parties’ correctly set out the elements of a Michigan

legal malpractice cause of action, their interpretation of the suit-within-a-suit doctrine is

so broad that it nearly eclipses the parameters of section 1338 and the federalism concerns

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set out in Grable. Michigan’s suit-within-a-suit doctrine is limited, and none of the

instances cited in Coleman in which Michigan courts have found its application is

warranted are at issue here: Warrior does not allege that Defendants’ negligence

prevented it from bringing a cause of action, that Defendants’ failure to appear caused

judgment to be entered against it, or that Defendants’ negligence prevented an appeal

from being perfected. Beyond these limited circumstances, this Court declines to apply

the suit-within-a-suit doctrine in the interest of preserving the balance of federal and state

judicial responsibilities. 

For these reasons,

NOW, THEREFORE, IT IS HEREBY ORDERED that Plaintiff’s Complaint is

DISMISSED without prejudice for lack of subject matter jurisdiction.

_______________________________

Gerald E. Rosen

Chief Judge, U.S. District Court

Dated: July 10, 2009

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

10, 2009, by electronic and/or ordinary mail.

s/Ruth A. Brissaud 

Case Manager

(313) 234-5137

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