Fitch, Even, Tabin & Flannery, LLP v. Dorsey et al., No. 1:25-cv-3141, Slip Op. (N.D. Ill. Feb. 23, 2026) (Coleman, J.).

Judge Coleman granted Defendants’ Fed. R. Civ. P. 12(b)(1) motion to dismiss in this declaratory judgment action where the plaintiff Fitch Even sought a declaration that its former client’s CEO was not a co-inventor of a patent the firm had helped prosecute. The Court found the firm was improperly using a federal patent inventorship correction claim to litigate defenses to a state court legal malpractice action.

Fitch Even had been retained by Prenatal Hope, Inc. (“PNH”) to prepare patent applications for PNH’s “Halo II” medical technology. PNH’s former CTO, James Balman, had independently filed a provisional patent application, and Fitch Even subsequently filed an international application claiming the benefit of that provisional. The resulting U.S. Patent No. 11,622,705 listed Balman as the sole inventor. PNH’s CEO, Tammy Dorsey, was not named as an inventor.

PNH subsequently sued Fitch Even for malpractice in state court, alleging the firm negligently failed to name Dorsey as a co-inventor. After the first malpractice action was dismissed as premature, PNH refiled in 2024. During discovery in that case, Fitch Even asked PNH to identify evidence supporting Dorsey’s inventorship claim; PNH allegedly provided none. Fitch Even then filed the federal declaratory judgment action seeking a ruling that Dorsey was not an inventor.

The Court acknowledged that federal courts have exclusive jurisdiction over Section 256 inventorship correction claims. However, examining Fitch Even’s actual motivation, the Court found the firm explicitly conceded its direct economic interest in declaratory relief was to mitigate potential malpractice damages or vitiate PNH’s negligence claim. The Court held that what Fitch Even sought was a declaration to mitigate damages, not a correction of inventorship.

A party cannot transform a state-law dispute into a federal action by injecting a federal question. The state court malpractice claims, whether the firm failed to follow client instructions, failed to list the proper parties, or failed to obtain an assignment, were rooted in state law.