The opinion of the court was delivered by: Judge James B. Zagel
MEMORANDUM OPINION AND ORDER
Plaintiff Altapure, LLC ("Altapure"), a Wisconsin limited liability corporation, brought suit in the Circuit Court of Cook County, Illinois against Defendant Reed Smith, LLP ("Reed Smith"), a Delaware limited liability partnership, alleging breach of contract and professional negligence on the part of Reed Smith. In its complaint, Altapure states that Reed Smith, a law firm, was hired to prosecute patents in the U.S. and internationally for a product invented by Altapure. Altapure further alleges that as a result of negligent conduct by Reed Smith, it has been precluded from securing patent protection for its invention in any jurisdiction outside the United States.
Reed Smith timely removed this suit to the Northern District of Illinois, Eastern Division and Altapure has now moved to remand the case back to Cook County pursuant to 28 U.S.C. § 1447. For the reasons to follow, the motion to remand is granted. Altapure's request for costs and fees is denied. The suit is remanded to the Circuit Court of Cook County, Law Division, and the federal case is to be terminated.
On August 26, 2005, Plaintiff Altapure filed with the United States Patent and Trademark Office (USPTO) a provisional patent application for its recently invented aerosol transducer. Stated briefly, this transducer allows a broader range of use for a number of industries by incorporating a protective barrier of a particular width bonded directly to the face of the transducer.
On or about July 5, 2006, Altapure sought the services of Reed Smith to pursue the preparation and filing of a non-provisional patent in the U.S. and to obtain patent protection abroad for its transducer. Specifically, Altapure desired patent protection with the European Patent Office, a process which requires application via the Patent Cooperation Treaty (PCT).
On August 24, 2006, Reed Smith filed patent applications on behalf of Altapure with the USPTO and under the PCT. On March 18, 2008, the USPTO denied the U.S. patent application as a result of indefiniteness and/or lack of specificity, and two days later the PCT patent application was denied for similar reasons. By the beginning of 2010, Altapure was able to receive patent protection in the U.S. for its transducer through the help of another law firm, but has since been unable to secure patent protection abroad, specifically in the European market it desired to enter.
On January 3, 2012, Altapure filed suit against Reed Smith in the Circuit Court of Cook County, Illinois for breach of contract and professional negligence. In particular, each cause of action alleges that Altapure was unable to secure patent protection abroad as a result of Reed Smith's negligent conduct related to the drafting and/or filing of the PCT patent application. Reed Smith timely removed the suit to this court, and Altapure promptly moved to remand.
While many of the facts and details surrounding the merits of the case remain in dispute, the merits of the case need not be determined at this time.
When a party believes that the district court lacks subject matter jurisdiction over a case removed from state court, that party may move to remand the case pursuant to § 1447, which permits the court to send the case back to state court should it determine that subject matter jurisdiction is not present. 28 U.S.C § 1447. In these instances, the burden is on the party seeking removal, not the moving party, to show by a preponderance of the evidence that the court has subject matter jurisdiction over the suit. Jones v. Gen. Tire & Rubber Co., 541 F.2d 660, 664 (7th Cir. 1976); Carroll v. Stryker Corp., 658 F.3d 675, 680 (7th Cir. 2011).
A defendant may remove to federal district court a civil suit filed in state court so long as the district court has original jurisdiction. 28 U.S.C. § 1441. Courts should interpret the removal statute narrowly and presume that the plaintiff may choose his or her forum. ...