ORDER DIRECTING PLAINTIFFS TO SHOW CAUSE WHY THIS COURT SHOULD NOT RECOMMEND TO THE DISTRICT COURT THAT PLAINTIFFS' MOTION FOR DEFAULT JUDGMENT BE DENIED, AND THE CASE DISMISSED, OR REMANDED TO STATE COURT, FOR LACK OF FEDERAL SUBJECT MATTER JURISDICTION (Document 12)
GARY S. AUSTIN, Magistrate Judge.
Pending before the Court is a Motion for Default Judgment filed by Plaintiffs Califresh of California, LLC and Morgan Murray ("Plaintiffs"). (Doc. 12). Upon a review of Plaintiffs' moving papers, the Court notes that it lacks subject matter jurisdiction over this case. Plaintiffs are therefore ordered to show cause why this Court should not recommend to the District Court that the motion for default judgment be denied, and the case dismissed, or remanded to state court, for lack of federal subject matter jurisdiction.
On February 8, 2013, Plaintiffs filed a complaint against Defendants Rodney K. Worrel, attorney-at-law, and the law firm of Worrel & Worrel ("Defendants"). (Doc. 2). The complaint asserts that this Court has jurisdiction based on 28 U.S.C. §§ 1331 and 1338(a).
The complaint alleges a legal malpractice claim premised on the Defendants' failure to timely file a patent application regarding a technique for processing fresh green chick peas developed by Plaintiffs. The gravamen of this claim is that Defendants' failure to timely file the patent application resulted in Plaintiffs being permanently barred from patenting their invention under applicable federal patent laws, specifically 35 U.S.C. § 102.
In addition to the legal malpractice claim, the complaint alleges a claim of fraud and misrepresentation, based on false assurances by Defendants that Plaintiffs' patent application had been filed with, and was under review by, the United States Patent and Trademark Office, as well as regarding their expertise in patent law.
Finally, the complaint includes a demand for compensatory damages in the amount of $10, 012, 795.00, based on the lowered market value of Califresh of California, LLC, and lost profits, resulting from Plaintiffs' permanent inability to secure patent protection for their newly-developed processing technique.
On June 4, 2013, Plaintiffs filed the instant motion seeking a default judgment and damages in the amount of $10, 000, 000.00 against Defendants. (Doc. 12). The motion appears to seek a default judgment against Defendants solely on the basis of the legal malpractice claim alleged in the complaint.
In reviewing Plaintiffs' moving papers, the Court finds that it lacks subject matter jurisdiction over this case. The question confronting the Court is whether the district court has jurisdiction under 28 U.S.C. § 1338(a), which confers original jurisdiction over "any civil action arising under any Act of Congress relating to patents." 28 U.S.C. § 1338(a).
A. The Applicable Jurisdictional Inquiry Under the Recent Supreme Court Case, Gunn v. Minton
A cause of action created by state law may "aris[e] under" federal patent law, within the meaning of 28 U.S.C. § 1338(a), if it involves a patent law issue that is "(1) necessarily raised, (2) actually disputed, (3) substantial, and (4) capable of resolution in federal court without disrupting the federal-state balance approved by Congress." Gunn v. Minton, 133 S.Ct. 1059, 1065 (2013), citing Grable & Sons Metal Prods., Inc. v. Darue Eng'g & Mfg., 545 U.S. 308, 314 (2005) (setting forth the above conjunctive, four-factor test for federal jurisdiction over state law claims, hereinafter " Grable test").
In its recent decision in Gunn v. Minton , the Supreme Court made clear that "state legal malpractice claims based on underlying patent matters will rarely, if ever, arise under federal patent law for purposes of § 1338(a)." Gunn, 133 S.Ct. at 1065. In interpreting 28 U.S.C. § 1338(a), the Court focused on the third factor of the Grable test, which requires that, in order to trigger federal jurisdiction over a state law claim, the patent issue presented must be "substantial." The Court held that while specific malpractice claims may "necessarily raise disputed questions of patent law, " those questions usually are "not substantial in the relevant sense." Id. at 1066. The Court explained that, with respect to the scope of § 1338(a), "the substantiality inquiry under Grable looks to the importance of the [patent] issue to the federal system as a whole, " rather than to "the particular parties in the immediate suit." Id. The Court determined that patent issues ...