FINAL UNTIL TIME EXPIRES TO FILE REHEARING MOTION AND, IF
from the Circuit Court for Sarasota County; Rochelle Curley,
L. Young of the Law Office of Roger L. Young, P.A., Sarasota,
D. Tinker, Frank H. Gassler, and Scott S. Amitrano of Banker
Lopez Gassler, P.A., St. Petersburg; and Hala A. Sandridge of
Buchanan Ingersoll & Rooney, P.C., Tampa, for Appellees
Dynamics, Inc. (Solar), appeals the trial court's order
dismissing, without prejudice, its legal malpractice action
against Buchanan Ingersoll & Rooney, P.C. (Buchanan), and
Christopher E. Paradies. We have jurisdiction. See Fla.
R. App. P. 9.030(b)(1)(A). After careful review of the
record, and with the benefit of oral argument, we affirm.
hired Buchanan and Mr. Paradies to seek a patent for
Solar's fastening shade system for playground
structures. Allegedly, the issued patent was
inadequate to protect Solar's idea and design from
infringement by competitors. In response to Solar's legal
malpractice lawsuit, Buchanan and Mr. Paradies moved to
dismiss the complaint. The trial court granted the motion and
dismissed the case, concluding that it lacked subject matter
jurisdiction. See 28 U.S.C. § 1338(a)
(2015) ("No State court shall have jurisdiction over any
claim for relief arising under any Act of Congress relating
to patents . . . .").
argues that the trial court erred. According to Solar, the
malpractice claim is a pure state law matter that does not
raise a substantial question of federal law. Buchanan and Mr.
Paradies insist otherwise. They contend that before any
malpractice claim can proceed, a federal court must
necessarily decide the scope, validity, or infringement of
the patent. Those determinations, they tell us, can only be
made in an action by Solar in federal court against an
alleged patent infringer. See 35 U.S.C. § 271
(2015) (creating a cause of action for patent infringement).
Only against that tableau, they say, can a state court
determine whether the lawyers committed malpractice that
caused Solar damage. As we will see, Buchanan and Mr.
Paradies have the better argument. The trial court correctly
found that it lacked subject matter jurisdiction.
retained Mr. Paradies in the spring of 2006 to obtain a
patent for its fastening shade system. The United States
Patent and Trademark Office issued a patent, '237 Patent,
in January 2008. Shortly thereafter, Solar began negotiations
with another company, Playcore, concerning the grant of an
exclusive license for Playcore to use, or practice, the
patented invention. By the summer of 2008, negotiations
stalled. Playcore objected to a proposed license agreement
prepared by Mr. Paradies, claiming that the patent was
"too weak." Playcore proceeded to design and market
its own shading system.
learning that other companies also were selling a similar
shade system, Solar sought further legal advice from Duane A.
Stewart, III, another Buchanan lawyer. Mr. Stewart advised
that "the patent that [Buchanan and Mr. Paradies] had
obtained for [Solar] had failed to adequately protect the
company's idea and function, and that the patent provided
Without first filing a federal patent infringement suit
against any of its competitors, Solar sued Buchanan and Mr.
Paradies in state court. They alleged that Buchanan and Mr.
Paradies "were negligent in failing to protect
[Solar's] idea and design from infringement, and by
failing to properly patent the fastening system." After
the trial court dismissed the case, this appeal ensued.