Genelink Biosciences, Inc. v. Gary D. Colby, Ph.d., Esq. and Duane Morris, Llp

# NOTE: This order is nonprecedential. United States Court of Appeals for the Federal Circuit

GENELINK BIOSCIENCES, INC.,
Plaintiff-Appellee,
V.
GARY D. COLBY, PH.D., ESQ. AND DUANE MORRIS,
LLP,
Defendants-Appellants.

2010-1454

Appeal from the United States District Court for the
District of New Jersey in case no. 09-CV-5573, Judge Noel
L. Hillman.

ON MOTION

Before RADER, Chief Judge, LOURIE and O'MALLEY,
Circuit Judges.

RADER, Chief Judge.

ORDER

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Genelink BioSciences, Inc. moves to dismiss Gary D.
Colby, Ph.D. et al.'s (Colby) appeal as improper under 28
U.S.C. § 1447(d). Colby opposes. Genelink replies.

On September 29, 2009, Genelink filed a complaint in
New Jersey state court alleging that Colby negligently
handled two of its patent applications, one in Japan and
one in the United States. Genelink's complaint asserts
that it lost valuable intellectual property rights because
the defendants allowed its Japanese patent application to
lapse and allowed its United States patent application to
be deemed abandoned by failing to comply with certain
deadlines.

Colby removed the case to the United States District
Court for the District of New Jersey pursuant to 28 U.S.C.
§ 1441. The ground for removal asserted by Colby was
that the complaint was based in part on a federal ques-
tion pursuant to 28 U.S.C. § 1338. According to Colby,
Genelink's malpractice suit hinges on demonstrating that,
but for the malpractice, Genelink's U.S. patent would
have issued.

Genelink moved the district court to remand the case
back to state court, disputing that federal jurisdiction
existed over the malpractice causes. Genelink argued
that any underlying patent issue was merely incidental to
its primary allegation that the attorney violated state law
obligations by failing to meet certain filing deadlines
before the U.S. Patent and Trademark Office. In doing so,
Genelink cited Warrior Sports, Inc. v. Dickinson Wright,
P.L.L.C., 632 F.Supp.2d 694 (E.D. Mich. 2009), in which
the United States District Court for the Eastern District
of Michigan determined that federal jurisdiction could not
be invoked for similar malpractice allegations.

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Relying heavily on the district court's analysis in War-
rior Sports, the District Court for the District of New
Jersey held that there is "no basis for exclusive jurisdic-
tion in the federal courts in this case," and remanded the
matter to state court. Colby filed a notice of appeal
seeking this court's review of the remand order.

Colby contends that the district court ignored this
court's precedent relating to federal jurisdiction over
malpractice actions. Colby in particular cites Davis v.
Brouse McDowell, L.P.A., 596 F.3d 1355 (Fed. Cir. 2010).
There, this court held that federal patent law jurisdiction
over alleged negligence with regard to preparing and
filing applications before the PTO is proper if to succeed
the plaintiff must establish it would have received a
patent but for the alleged negligence. Id. at 1361. Colby
further notes that this court recently ruled that the
district court in Warrior Sports was incorrect in determin-
ing that federal jurisdiction could not be invoked over the
malpractice claims similar to those in this case. See
Warrior Sports, Inc. v. Dickinson Wright, P.L.L.C., 631
F.3d 1367 (Fed. Cir. 2011).

While the District of New Jersey's jurisdictional de-
termination appears contrary to this court's precedent, it
does not follow that this court has authority to grant
Colby's requested relief. Unlike in Davis and Warrior
Sports, where the district courts addressed the merits of
the causes, Colby has appealed from an order remanding
the case to state court due to lack of federal jurisdiction.

Congress has placed broad restrictions on the power of
federal appellate courts to review district court orders
remanding removed cases to state courts. Things Re-
membered, Inc. v. Petrarca, 516 U.S. 124, 127 (1995). The
general statutory provision governing the reviewability of
remand orders is 28 U.S.C. § 1447(d), which states in

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relevant part: "An order remanding a case to the State
court from which it was removed is not reviewable on
appeal or otherwise ... . " The Supreme Court has ex-
plained that "[a]s long as a district court's remand is
based on ... lack of subject matter jurisdiction - the
grounds for remand recognized by § 1447(c) - a court of
appeals lacks jurisdiction to entertain an appeal of the
remand order under § 1447(d)." Things Remembered, 516
U.S. at 127-28.

In its remand order, the district court made clear that
the basis for removal was its view that it lacked jurisdic-
tion over the case. The court resolved the parties' dispute
in light of the Supreme Court's jurisdictional test for
whether the case "arises under" the federal patent stat-
ute. See Christianson v. Colt Indus. Operating Corp., 486
U.S. 800, 808 (1988). The court further explained that in
light of its analysis that the complaint did not raise a
substantive issue of patent law, "there was no basis for
exclusive jurisdiction in the federal courts in this case."
That is the end of the matter. We have no authority to
reverse or affirm the merits of the court's decision beyond
a determination of the court's characterization of its
remand as resting upon lack of subject-matter jurisdic-
tion. See Powerex Corp. v. Reliant Energy Servs., Inc., 551
U.S. 224, 234 (2007); see also Thermtron Products, Inc. v.
Hermansdorfer, 423 U.S. 336, 351 (1976) ("Congress
immunized from all forms of appellate review any remand
order issued on the grounds specified in § 1447(c),
whether or not that order might be deemed erroneous by
an appellate court.").

Colby's contention that the Supreme Court's decision
in Osborn v. Haley, 549 U.S. 230 (2007) requires a differ-
ent outcome is unpersuasive. In Osborn, the plaintiff
sued a federal employee in state court alleging tortious
interference with her employment. The United States

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Attorney, serving as the Attorney General's delegate,
certified, pursuant to the Waterfall Act, 28 U.S.C. § 2679,
that "the employee was acting within the scope of em-
ployment at the time of the incident out of which the
claim arose." Under the Waterfall Act, the Attorney
General's certification substitutes the United States as
the defendant in place of the federal employee. Because
the action was commenced in state court, the Attorney
General's certification required removal of the case to
federal court because the Waterfall Act commands that
the certification is "conclusiv[e] . . . for purposes of re-
moval." § 2679(d)(2). The district court in Osborn re-
jected the certification and remanded the case to the state
court.

The Supreme Court held that under those circum-
stances, the court of appeals had jurisdiction to review the
remand order. According to the majority's opinion, the
Waterfall Act's distinctive certification and substitution
regime directly conflicted with § 1447(d) because both
provisions are "antishuttling" provisions "aimed to pre-
vent prolonged litigation of questions of jurisdiction of the
district court to which the cause is removed." Osborn, 549
U.S. at 243. Thus, the critical issue was choosing be-
tween two "forum-selection rule[s]," of which only one
could prevail. Id. at 244. Because the certification and
substitution process was "[t]ailor-made for Westfall Act
cases," the majority concluded that Congress intended it
to take precedence over § 1447(d). Id.

Contrary to Colby's broad reading of Osborn, the Su-
preme Court was clear about the narrow scope of its
holding. The Court expressly clarified that the Waterfall
Act's command that the Attorney General's certification
was conclusive with regard to removal distinguished it
"from the typical case remanded for want of subject
matter jurisdiction." Id. at 243. In differentiating be-

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tween these situations, the Court explained that
"[o]rdinarily," where § 1447(d)'s bar to appellate review
applies, the district court is presented with a threshold
inquiry of whether diversity exists or, pertinent to this
case, "whether the complaint raises a federal question."
Id. In Waterfall Act cases, however, the Court empha-
sized that the Attorney General's certification forecloses
any jurisdictional inquiry. Id.

The situation here is the "typical" case described in
Osborn and thus is barred from appellate review.

Accordingly,

IT IS ORDERED THAT:

(1) The motion is granted. The appeal is dismissed.

(2) Each side shall bear its own costs.
\-

FOR THE COURT

MAY 2 5 2011

/s/ Jan Horbaly

Date

Jan Horbaly Clerk

cc: Donald P. Jacobs, Esq.
John T. Wolak, Esq.

s19

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
MAY 25 2011

JAN HORBALY
CLERK