1 Jon A.

Birmingham (State Bar #271034) Fitch, Even, Tabin & Flannery, LLP 2 21700 Oxnard Street, Suite 1740 3 Woodland Hills, California 91367 Email: jbirmi@fitcheven.com 4 Telephone: (818) 715-7025 Facsimile: (818) 715-7033 5 6 Attorneys for Defendants, Fitch Even Tabin & Flannery Thomas F. Lebens 7 8 9 10 11 12 13 14 Plaintiff, vs. [formerly California Superior Court for the County of San Diego, Case No. 372012-00094848-CU-PN-CTL] DEFENDANTS THOMAS F. LEBENS AND FITCH EVEN TABIN & FLANNERYS NOTICE OF REMOVAL ROBERT SANCHEZ, IN THE UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA

'12CV1550 WQH Case No. _____________ JMA

15 THOMAS F. LEBENS, ESQ.; FITCH EVEN TABIN & FLANNERY, and 16 DOES 1 to 20, 17 18 19 20 21 Defendants.

NOTICE OF REMOVAL BY DEFENDANTS THOMAS F. LEBENS AND FITCH EVEN TABIN & FLANNERY Defendants Thomas F. Lebens (Lebens) and Fitch Even Tabin & Flannery

22 (FETF), pursuant to 28 U.S.C. 1331, remove to this Court the state action described 23 below. Pursuant to 28 U.S.C. 1331, 1367(a) and 1338, this Court has original 24 jurisdiction over Plaintiffs claims relating to purported malpractice in relation to a U.S. 25 patent. Removal is therefore proper under 28 U.S.C. 1441(a). 26 27 28 1
DEFENDANTS THOMAS F. LEBENS AND FITCH EVEN TABIN & FLANNERYS NOTICE OF REMOVAL - CASE NO. _____________

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ALL PROCEDURAL REQUIREMENTS FOR REMOVAL HAVE BEEN SATISFIED 1. On April 2, 2012, Plaintiff filed a complaint captioned Sanchez v. Thomas F.

4 Lebens, Esq., et al., Case No. 37-2012-00094848-CU-PN-CTL, in California Superior 5 Court for the County of San Diego, against Lebens, FETF and DOES 1-20. 6 2. Counsel for Lebens and FETF accepted service of the State Court Action 7 Summons and Complaint on May 25, 2012. This notice is therefore timely pursuant to 8 28 U.S.C. 1446(b). 9 3. Pursuant to 28 U.S.C. 1446(d), copies of this Notice of Removal are being 10 served upon counsel for Plaintiff and filed with the Clerk of the California Superior Court 11 for the County of San Diego as an exhibit to a Notice to State Court of Removal to 12 Federal Court. A copy of the Notice being filed in state court is attached hereto (without 13 exhibits) as Exhibit A. 14 4. Pursuant to 28 U.S.C. 1446(a), true and correct copies of all process, 15 pleadings and orders served upon Lebens and FETF are attached to this Notice as Exhibit 16 B. 17 5. The California Superior Court for the County of San Diego is located within This Notice of Removal is 18 the Southern District of California. 28 U.S.C. 84(d). 20

19 therefore properly filed in this Court pursuant to 28 U.S.C. 1441(a) and 1446(a). 6. All non-fictitious, served defendants, i.e., Lebens and FETF, join in and 21 consent to the removal of the action. 28 U.S.C. 1446(b). 22 23 7. ALLEGATIONS OF THE COMPLAINT This is a putative complaint against Lebens and FETF for malpractice

24 relating to a U.S. patent. 25 8. Plaintiff alleges that Lebens and FETF were retained and employed to 26 represent Plaintiff in the acquisition of and perfection of a certain patent, and to do all 27 28 2
DEFENDANTS THOMAS F. LEBENS AND FITCH EVEN TABIN & FLANNERYS NOTICE OF REMOVAL - CASE NO. _____________

1 those things necessary to obtain the patent, file, and preserve said patent. (Complaint 2 3.) 3 9. Plaintiff further alleges that Lebens and FETF failed in their duty, and were 4 negligent in their actions in that they failed to appropriately notify the Plaintiff herein of 5 each required maintenance fee. As a result of the actions of the Defendants herein the 6 patent herein expired on May 2, 2008. (Complaint 7.) 7 10. Plaintiff further alleges that [s]ubsequent to the date that the Patent expired 8 the United States Patent and Trademark Office allowed for certain remedies for the 9 reinstatement of the expired Patent. Although the Defendant herein and each of them 10 were aware that said Patent had expired, and were aware that these remedies were 11 available to the Plaintiff they failed in their duty to so notify the Plaintiff. As a result of 12 this the time to reinstate the application to the Patent Office expired. (Complaint 8.) 13 11. Plaintiff further alleges that [a]s a direct and proximate result of the 14 negligence of the Defendants and each of them the Plaintiff herein suffered damages in 15 that he has now irremediably lost the Patent which is the subject of this Complaint. 16 (Complaint 10.) 17 12. Plaintiff also alleges that [a]s a further direct and proximate cause of the 18 negligence the Plaintiff herein suffered further damages in that he has lost the ability to 19 sell the patented product in the market as the sole provider. (Complaint 11.) 20 13. Lebens and FETF deny Plaintiffs allegations, believe the Complaint lacks 21 merit, deny any negligence and deny that Plaintiff has been harmed in any way as a result 22 of any alleged action of Lebens and FETF. Lebens and FETF further believe that any 23 alleged harm to Plaintiff was the result of Plaintiffs own actions and/or inactions. 24 25 14. BASIS FOR REMOVAL Federal district courts have original jurisdiction of all civil actions arising

26 under the Constitution, laws, or treaties of the United States. 28 U.S.C. 1331. 27 Specifically, district courts have original jurisdiction of any civil action arising under any 28 3
DEFENDANTS THOMAS F. LEBENS AND FITCH EVEN TABIN & FLANNERYS NOTICE OF REMOVAL - CASE NO. _____________

1 Act of Congress relating to patents . . . . 28 U.S.C. 1338(a). No State court shall have 2 jurisdiction over any claim for relief arising under any Act of Congress relating to patents 3 . . . . Id. 4 15. The U.S. Court of Appeals for the Federal Circuit has recognized its 5 jurisdiction in patent malpractice cases on numerous occasions. See, e.g., Immunocept, 6 LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281, 1285 (Fed. Cir. 2007) (there is no 7 way Immunocept can prevail without addressing claim scope); Davis v. Brouse 8 McDowell, L.P.A., 596 F.3d 1355, 1361-62 (Fed. Cir. 2010) (because case-within-a-case 9 doctrine applies, patentability of inventions is controlled by U.S. patent law); Herman 10 Minkin v. Gibbons, P.C., 2012 U.S. App. LEXIS 9158, at *13 (Fed. Cir. May 4, 2012) 11 (this courts binding precedent recognizes our jurisdiction in patent attorney malpractice 12 cases such as this one, in which the plaintiff is required to establish that, but for attorney 13 negligence, he would have obtained valid claims of sufficient scope that competitors 14 could not easily avoid). 15 16. In finding federal jurisdiction in a patent malpractice case, the U.S. Court of 16 Appeals for the Federal Circuit stated as follows: 17 18 19 20 21 22 23 24 25 26 27 28 4
DEFENDANTS THOMAS F. LEBENS AND FITCH EVEN TABIN & FLANNERYS NOTICE OF REMOVAL - CASE NO. _____________

Under California law, the elements of a legal malpractice claim are: (1) breach of the attorneys duty to use such skill, prudence, and diligence as other members of the profession commonly possess and exercise; (2) a proximate causal connection between the negligent conduct and the resulting injury; and (3) actual loss or damage resulting from the negligence. Thompson v. Halvonik, 36 Cal. App. 4th 657, 43 Cal. Rptr. 2d 142, 145 (Cal. Ct. App. 1995) (citing Budd v. Nixen, 6 Cal. 3d 195, 98 Cal. Rptr. 849, 491 P.2d 433, 436 (Cal. 1971)). To prove a proximate causal connection, the plaintiff must show that the harm or loss would not have occurred without the attorneys malpractice. Viner v. Sweet, 30 Cal. 4th 1232, 135 Cal. Rptr. 2d 629, 70 P.3d 1046, 1048 (Cal. 2003). This requires the case within a case or trial within a trial determination. See Blanks v. Shaw, 171 Cal. App. 4th 336, 89 Cal. Rptr. 3d 710, 725 (Cal. Ct. App. 2009).

1 Landmark Screens, LLC v. Morgan, Lewis & Bockius, LLP, 676 F.3d 1354, 1360 (Fed. 2 Cir. 2012). 3 17. Plaintiffs cause of action for malpractice requires a case within a case 4 determination which invokes patent laws. Plaintiffs right to relief necessarily depends 5 on resolution of a substantial question of federal patent law, in that patent law is a 6 necessary element of one of the well-pleaded claims. Christianson v. Colt Industries 7 Operating Corp., 486 U.S. 800, 809 (1988). In particular, Plaintiffs complaint on its face 8 raises numerous issues (e.g., patent expiration, reinstatement, infringement, validity and 9 damages) arising exclusively under federal patent law, as explained below. 11 decided as part of the malpractice case. 12 18. Paragraph 7 of Plaintiffs complaint raises issues regarding expiration of a 13 patent for failure to timely pay a maintenance fee. Patent maintenance fees and their due 14 dates are governed by federal patent law, specifically 35 U.S.C. 41(b). 16 expired for failure to timely pay a maintenance fee. 17 19. Paragraphs 8 and 10 of Plaintiffs complaint raise issues regarding remedies 18 under which an expired patent can be reinstated. Reinstatement of an expired patent is 19 governed by federal patent law, specifically 35 U.S.C. 41(c). Further, 37 C.F.R. 1.378 20 sets forth the requirements for a petition to reinstate an expired patent before the U.S. 21 Patent and Trademark Office. Thus, patent law is necessary to the overall success of the 22 claim relating to whether the patent is expired for failure to timely pay a maintenance fee. 23 20. As recognized by an Ohio state appellate court in affirming dismissal of a 24 malpractice claim alleging failure to pay a patent maintenance fee, [o]bviously, whether 25 or not the patent had lapsed, and whether or not revival/reinstatement should have been 26 sought, require the construction and interpretation of federal patent law. TattleTale 27 28 5
DEFENDANTS THOMAS F. LEBENS AND FITCH EVEN TABIN & FLANNERYS NOTICE OF REMOVAL - CASE NO. _____________

Those

10 substantial questions of federal patent law are the case within a case that must be

Thus, patent

15 law is necessary to the overall success of the claim relating to whether the patent is

1 Portable Alarm Sys., Inc. v. Calfee, Halter & Griswold, LLP, 2009-Ohio-1379, 2009 Ohio 2 App. LEXIS 1217, at *12 (Ohio Ct. App. Mar. 26, 2009). 3 21. Paragraphs 9-11 of Plaintiffs complaint relate to allegations of causation and 4 damages, including allegations that there is a third part retailer selling a product in direct 5 competition with the Plaintiff and that Plaintiff has lost the ability to sell patented 6 product in the market as the sole provider. 7 22. Whether or not there is a third party selling a product that would have 8 infringed Plaintiffs patent but-for its expiration necessarily raises exclusive federal 9 questions relating to patent infringement (e.g., 35 U.S.C. 271), validity (e.g., 35 U.S.C. 10 102, 103, and 112), and damages (e.g., 35 U.S.C. 284). Thus, patent law is necessary 11 to the overall success of the claim relating to any damages due to the competitor activity 12 alleged in the complaint, as well as the allegation raised in the complaint as to whether 13 Plaintiff is no longer the sole provider. 14 23. These allegations will require claim construction. As with any patent 15 infringement analysis, the first step is claim interpretation, a matter of law exclusively for 16 the Court. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (in 17 banc), aff'd, 517 U.S. 370 (1996). Moreover, evidence of validity can require expert 18 testimony. See Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. 19 Cir. 2004). 20 24. As recognized by a California state appellate court in affirming a lack of state 21 court jurisdiction in a patent-related malpractice action, if an infringement action was 22 prevented by the attorneys negligence, then it seems to us that proof of damages would 23 require not just evidence of facts but presentation of substantial patent law questions that 24 the federal court is better equipped to address. Landmark Screens, LLC v. Morgan, Lewis 25 & Bockius, LLP, 183 Cal. App. 4th 238; 107 Cal. Rptr. 3d 373; 2010 Cal. App. LEXIS 26 415, at **23 (Cal. Ct. App. Mar. 29, 2010). 27 28 6
DEFENDANTS THOMAS F. LEBENS AND FITCH EVEN TABIN & FLANNERYS NOTICE OF REMOVAL - CASE NO. _____________

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CONCLUSION For all of the reasons stated above, this action is within the original

3 jurisdiction of this Court pursuant to 28 U.S.C. 1331, 1367(a) and 1338. Accordingly, 4 this action is removed pursuant to 28 U.S.C. 1441(a). 5 26. By this Notice of Removal, Lebens and FETF do not waive any objections 6 they may have as to service, jurisdiction or venue, or any other defenses or objections it 7 may have to this action. Lebens and FETF intend no admission of fact, law or liability by 8 this Notice of Removal, and expressly reserve all defenses, motions and/or pleas. 9 WHEREFORE, Lebens and FETF gives notice that the above-described action 10 pending against them in the Superior Court for the County of San Diego is removed to 11 this Court. 12 Dated: June 22, 2012 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7
DEFENDANTS THOMAS F. LEBENS AND FITCH EVEN TABIN & FLANNERYS NOTICE OF REMOVAL - CASE NO. _____________ 610223

Fitch, Even, Tabin & Flannery, LLP

s/Jon A. Birmingham Jon A. Birmingham Email: jbirmi@fitcheven.com Of counsel: George W. Spellmire, Jr. Email: gws@spellmirelaw.com Spellmire Law Firm, LLC 233 S. Wacker Dr., Ste. 2100 Chicago, Illinois 60606 Phone: (312) 258-9400 Facsimile: (312) 258-9444 Attorneys for Defendants, Thomas F. Lebens and Fitch Even Tabin & Flannery

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CERTIFICATE OF SERVICE I hereby certify that on June 22, 2012 I caused the foregoing DEFENDANTS

3 THOMAS F. LEBENS AND FITCH, EVEN TABIN & FLANNERYS NOTICE OF 4 REMOVAL to be electronically filed with the Clerk of the Court using the CM/ECF 5 system which will send notification of such filing to all party participants subscribing to 6 the system. Further, service by first class mail, postage prepaid was sent to the below 7 counsel for the Defendant. 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8
DEFENDANTS THOMAS F. LEBENS AND FITCH EVEN TABIN & FLANNERYS NOTICE OF REMOVAL - CASE NO. _____________

Raymond H. Wood Wood & Gonzales 2005 Highland Ave., Suite 14 National City, CA 91950

s/Jon A. Birmingham Jon A. Birmingham Attorney for Defendants, Thomas F. Lebens and Fitch Even Tabin & Flannery