IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF WISCONSIN

PATRIOT UNIVERSAL HOLDING, LLC, Plaintiff, v. ANDREW MCCONNELL And BOYLE, FREDRICKSON, NEWHOLM, STEIN & GRATZ, S.C., Defendants. Case No. 12-cv-00907

NOTICE OF REMOVAL BY DEFENDANTS

TO:

Atty. Albert Solochek Howard, Solochek & Weber SC 324 East Wisconsin Avenue, Suite 1100 Milwaukee, Wisconsin 53202-4309 Telephone: (414) 272-0760 Facsimile: (414) 272-7265 Email: alsolochek@hswmke.com PLEASE TAKE NOTICE that, pursuant to 28 U.S.C. 1331, 1338(a), 1441, 1446 and

1454, defendants, Andrew McConnell and Boyle, Fredrickson, Newholm, Stein & Gratz, S.C., by their attorneys, Peterson, Johnson & Murray, S.C., hereby give notice of the removal of this action to the United States District Court for the Eastern District of Wisconsin, Green Bay Division, from the Circuit Court for Brown County, Wisconsin. In support of this notice of removal, the defendants aver as follows: 1. On August 3, 2012, plaintiff, Patriot Universal Holding, LLC (Patriot), filed a

civil action against defendants, Andrew McConnell and Boyle, Fredrickson, Newholm, Stein &

Gratz, S.C. (collectively defendants), Patriot Universal Holding, LLC v. McConnell, et al., Case No. 2012CV001611 (Brown Cir. Ct.). 2. Patriot served defendants with a summons and complaint on August 14. The

summons and complaint are all of the process, pleadings and orders served on defendants to date. Pursuant to 28 U.S.C. 1446(a), copies of the summons and complaint are attached hereto as exhibit 1000. 3. Defendants are filing and serving this notice of removal within the 30 day

limitation provided in 28 U.S.C. 1446(b). 4. Article I, Section 8, Clause 8 of the United States Constitution grants Congress

the power [t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. In

enacting the Patent Act (35 U.S.C. 1-376), conferring exclusive jurisdiction on federal courts to hear disputes arising from the Act (28 U.S.C. 1338(a)), creating the Federal Circuit to hear appeals arising from the Act (28 U.S.C. 1295) and establishing the U.S. Patent and Trademark Office (PTO) (35 U.S.C. 1), Congress created a complex and interrelated federal scheme of law, remedy and administration. In fact, all federal patent rights are created by the actions of the PTO and the PTO has created a separate bar for attorneys practicing before it. See 37 CFR 11.5, 11.6, 11.7, 11.8 and 11.9. 5. 28 U.S.C. 1338(a) provides, No State court shall have jurisdiction over any

claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. 6. 28 U.S.C. 1454(a) provides that [a] civil action in which any party asserts a

claim for relief arising under any Act of Congress relating to patents, plant variety protection, or

copyrights may be removed to the district court of the United States for the district and division embracing the place where the action is pending. 7. In Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 809, 108 S.Ct.

2166, 100 L.Ed.2d 811 (1988), the Supreme Court stated that 1338(a) jurisdiction extends to any case in which a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiffs 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. 8. at 8-13) 9. Patriot alleges that defendants provided intellectual property advice, including In its complaint, Patriot alleges that it is the assignee of several patents. (Ex. 1000

prosecuting patent applications. (Id. at 17, 19-24) 10. Patriot alleges that defendants have switched allegiances (Id. at 38); are now

representing a party that is adverse to a former client (Id. at 43); and have ignored their fiduciary duties and professional responsibilities by aiding and abetting the unfair competition. . . . (Id. at 45) 11. Patriot sums its allegations at paragraph 44: As outlined above, Mr. McConnell: Was a member of the firm of Andrus, Sceales during the time that the 228 Patent and the 650 Patent were prosecuted; Wrote the Provisional Application upon which the 789 Patent is based; Wrote Provisional Applications covering analogous subject matter to the patents-in-suit;

Advised the Gehl entities on the maintenance and strategy with respect to the 228 and 650 Patents; Attended meetings, conferences and had discussions with the named inventors of the 789 Patent and other employees and consultants of the Gehl entities; Analyzed prior art in the field of the patents-in-suit and offered legal opinions in connection with that analysis, including the provisional patent that was the basis for the 789 Patent; Performed patent search on 789 Patent Application wherein some of the references found in that search were included in the re-examination requests made by Formax and Provisur.

12.

Patriot seeks damages because its adversaries . . . have been afforded an

otherwise unavailable benefit by virtue of McConnells dual representation (Id. at 46); and because McConnell has aided and abetted Formax and Provisur in the unfair competition (Id.). 13. Plainly, Patriots allegations arise under federal patent law and its right to relief

necessarily depends on the resolution of substantial questions of federal patent law. 14. As recently explained by the Federal Circuit in Byrne v. Wood, Herron & Evans,

LLP, 676 F.3d 1024, 102 U.S.P.Q.2d 1073 (Fed. Cir., Mar. 22, 2012): Patent-related malpractice claims necessarily involve attorney conduct before the U.S. Patent and Trademark Office (PTO) or before the federal courts (because of our exclusive jurisdiction), and there is a substantial federal interest in ensuring that federal patent law questions are correctly and uniformly resolved in determining the standards for attorney conduct in these proceedings, even when the patent law issue is case-specific. See generally Grable,1 545 U.S. 308, 125 S.Ct. 2363. Indeed, attorney conduct in patent cases is implicated by the patent law itself, such as by the doctrine of inequitable conduct, the exceptional-case statute, and the statutory provisions authorizing regulation of PTO practice. See Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc) (noting that an
1

Grable & Sons Metal Products, Inc. v. Darue Engineering & Manufacturing, 545 U.S. 308, 125 S.Ct. 2363, 162 L.Ed.2d 257 (2005).

attorney's submissions to the PTO may be a basis for an inequitable conduct finding); Brooks Furniture Mfg., Inc. v. Dutailier Int'l, Inc., 393 F.3d 1378, 1381 (Fed.Cir.2005) (noting that attorney misconduct may be a predicate for an exceptional case finding under 35 U.S.C. 285); Carter v. ALK Holdings, Inc., 605 F.3d 1319, 1324 (Fed. Cir. 2010) (The standards for practice before the PTO are governed by federal law. . . .). So too all federal patent rights are created by actions of a federal agency, the PTO. See Grable, 545 U.S. at 315, 125 S.Ct. 2363 (The Government thus has a direct interest in the availability of a federal forum to vindicate its own administrative action. . . .). 15. All of the claims in the complaint are related to defendants actions before the

PTO and their defense of clients in an infringement action. Because of this, the Circuit Court for Brown County, Wisconsin, does not have jurisdiction over Patriots claims. 28 U.S.C. 1338(a). 16. In addition to 28 U.S.C. 1338(a) and 1454, there is also federal question

jurisdiction under 1331: [A] federal court ought to be able to hear claims recognized under state law that nonetheless turn on substantial questions of federal law, and thus justify resort to the experience, solicitude, and hope of uniformity that a federal forum offers on federal issues. Grable, 545 U.S. at 312. WHEREFORE, defendants respectfully request that this case proceed in this court as an action properly removed thereto.

Respectfully submitted this 5 day of September, 2012. PETERSON, JOHNSON & MURRAY, S.C. Attorneys for Defendants /s/ Terry E. Johnson Terry E. Johnson State Bar No. 1016704 William F. Sulton State Bar No. 1070600 Post Office Address: 733 North Van Buren Street, Floor 6 Milwaukee, Wisconsin 53202-4705 Telephone: (414) 278-8800 Facsimile: (414) 278-0920 Email: tjohnson@pjmlaw.com Email: wsulton@pjmlaw.com
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