Supreme Court Decision Alert - February 20, 2013

Today (February 20, 2013) the Supreme Court issued one decision, described below, of interest to the business community.

Federal Jurisdiction—Legal-Malpractice Claims Involving Patent Disputes

Gunn v. Minton, No. 11-1118

Under 28 U.S.C. § 1338(a), federal courts have exclusive jurisdiction over any suit arising under federal patent law. Today, in a unanimous opinion authored by Chief Justice Roberts, the Supreme Court held in Gunn v. Minton, No. 11-1118, that this jurisdiction does not extend to state-law claims for legal malpractice that raise questions of patent law. The decision reverses a decision of the Texas Supreme Court, and also abrogates contrary holdings by the Federal Circuit in Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir. 2007), and Immunocept, L.L.C. v. Fulbright & Jaworski, L.L.P., 504 F.3d 1281 (Fed. Cir. 2007).

The case arose from a legal-malpractice action in Texas state court that Minton had filed against his lawyers based on their handling of his earlier patent-infringement action. Minton alleged that the lawyers had caused him to lose the earlier action—and committed malpractice—by failing to assert on a timely basis the "experimental use" exception to the bar on issuance of patents for items that have been "on sale" for more than a year before the filing of the patent application. The trial court granted summary judgment to the lawyers. But Minton persuaded the Texas Supreme Court that federal courts had exclusive jurisdiction over his claims under 28 U.S.C. § 1338(a) because his suit involved issues of federal patent law, thus requiring that the judgment against him be vacated (so that he could then re-file in federal court).

The Supreme Court reversed, holding that 28 U.S.C. § 1338(a) did not deprive the Texas courts of jurisdiction over Minton's legal-malpractice suit. The Supreme Court explained that the suit did not satisfy the four-part test, articulated in Grable & Sons Metal Products, Inc. v. Darue Engineering & Manufacturing, 545 U. S. 308, 313-314 (2005), for determining when a state-law claim "arises under" federal law—as required for there to be any federal-court jurisdiction, much less exclusive jurisdiction under § 1338(a).

The Supreme Court concluded that the first two Grable factors were met: The federal patent-law issue underlying Minton's malpractice suit was "'necessarily raise[d]'" and "'actually disputed.'" Slip op. at 7 (quoting Grable, 545...