Arc Products, L.l.c. v. Patrick D. Kelly

# NOTE: This order is nonprecedential.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

ARC PRODUCTS, L.L.C.,
Plaintiff-Appellee,
v.
PATRICK D. KELLY,
Defendant-Appellant.

2011-1122

Appeal from the United States District Court for the
Eastern District of Missouri in case no. 10-CV-1248,
Judge Carol E. Jackson.

## ON MOTION

## ORDER

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

PER CURIAM.

ARC Products, L.L.C. (ARC) moves to dismiss Patrick
D. Kelly's (Kelly) appeal as improper under 28 U.S.C. §
1447(d). Kelly opposes. ARC Products replies.

<!-- PageBreak -->

<!-- PageHeader="ARC PRODUCTS v. KELLY" -->

This appeal stems from a complaint that ARC
originally filed in the Twenty-First Judicial Circuit Court
of Missouri asserting claims of legal malpractice, negligent
misrepresentation, breach of fiduciary duty and breach of
contract against Kelly. Kelly represented ARC before the
U.S. Patent and Trademark Office in the prosecution of a
patent application for two plastic transportation devices.
ARC's complaint specifically alleges that due to Kelly's
negligence ARC was forced to forgo the application with
respect to one of the devices.

Kelly removed the case to the United States District
Court for the Eastern District of Missouri pursuant to 28
U.S.C. § 1441. The ground for removal asserted by Kelly
was that the complaint was based in part on a federal
question pursuant to 28 U.S.C. § 1338. According to Kelly,
ARC's malpractice suit hinges on a determination of the
validity of its patent application in light of the existence of
a previously-patented similar device. Because prior art
and novelty are at issue, Kelly contends that the case
requires resolution of substantive issues of patent law.

ARC moved the federal district court to remand the
case to state court. ARC disputed that its claims, which
relate to failure to comply with procedural deadlines,
allegations of misrepresentation and breach of contract,
raise a substantive federal issue. The district court
granted the motion determining that "plaintiff's claims do
not 'arise under' federal patent law and they do not depend
on resolution of any substantial question of federal patent
law . . . [and] therefore . . . there is no federal
jurisdiction[.]"

This court has recently issued decisions that appear to
directly undermine the district court's jurisdictional deter-
mination. See Davis v. Brouse McDowell, L.P.A., 596 F.3d
1355, 1361 (Fed. Cir. 2010) (holding that federal patent
law jurisdiction over alleged negligence with regard to

<!-- PageBreak -->

<!-- PageHeader="ARC PRODUCTS v. KELLY" -->

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); see also
Warrior Sports, Inc. v. Dickinson Wright, P.L.L.C., 631
F.3d 1367 (Fed. Cir. 2011). Nonetheless, we agree with
ARC that this court is precluded from exercising jurisdic-
tion over the district court's remand order.

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
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 for lack of subject matter juris-
diction. The court resolved the parties' dispute in light of
the Supreme Court's jurisdictional test for whether the
case "arises under" the federal patent statute. 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 federal jurisdiction."
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 jurisdiction. See Powerex Corp. v. Reliant
Energy Servs., Inc., 551 U.S. 224, 234 (2007); see also

<!-- PageBreak -->

<!-- PageHeader="ARC PRODUCTS v. KELLY" -->

Thermtron Products, Inc. v. Hermansdorfer, 423 U.S. 336,
351 (1976) ("Congress immunized from all forms of appel-
late 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.").

Accordingly,

IT IS ORDERED THAT:

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

(2) Each side shall bear its own costs.

(3) All other pending motions are moot.

FOR THE COURT

MAY 2 5 2011

/s/ Jan Horbaly

Date

Jan Horbaly Clerk

cc: James C. Ochs, Esq.
Patrick D. Kelly
s19

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

JAN HORBALY
CLERK