Gunn v. Minton

Brief Fact Summary.

Gunn, an attorney, represented Minton in a patent infringement action in which Minton’s patent was declared invalid. Thereafter, Minton sued Gunn forlegal malpractice in Texas state court, alleging that Gunn failed to raise an applicable exception in the patent infringement action. The Texas Supreme Court, reversing the lower Texas courts, held that the legal malpractice action had to be heard in federal court because it involved a question of federal patent law.

Synopsis of Rule of Law.

To determine if there is “arising under” jurisdiction in a case that originates in state rather than federal law, the proper inquiry is whether the state law claim necessarily raises a stated federal issue that is actually disputed and substantial, and which a federal forum may entertain without disturbing any congressionally approved balance of federal and state judicial responsibilities.

Facts.

Minton’s patent was declared invalid in a patent infringement action. Gunn, an attorney, represented Minton in the patent infringement action. Thereafter, Minton sued Gunn for legal malpractice in Texas state court, asserting that Gunn failed to raise an allegedly applicable “experimental use” exception in the patent infringement action, and therefore caused the unfavorable result. After a trial court and intermediate appellate court held that the legal malpractice action could be heard in Texas state court, the Texas Supreme Court reversed. The Texas Supreme Court held that the legal malpractice action had to be heard in federal court because it turned on a question of federal patent law.

Issue.

Was the legal malpractice claim, which arose out of alleged malpractice in a patent infringement action, subject to the exclusive jurisdiction of the federal courts?

Held.

No. The state courts were not deprived of subject matter jurisdiction.

Discussion.

Although the state courts had to consider a patent law question in order to resolve the legal malpractice claim, the determination on the patent law question would not have binding precedential value or even affect the patent’s validity. Thus, the federal forum was not necessary to provide any advantages that would be obtained by restricting jurisdiction to that forum.