Gunn v. Minton

Brief Fact Summary.

Gunn represented Minton in an underlying patent infringement lawsuit, brought in federal district court. Summary judgment was entered against Minton in the  patent infringement case. Minton’s filed a motion for reconsideration, which was denied. The Court of Appeals affirmed. Minton then filed a state court action for legal malpractice against Gunn. The stated trial court granted summary judgment in Gunn’s favor. Minton appealed, seeking to bring the malpractice case again, this time in federal district court. He argued that the Texas state court lacked jurisdiction over his legal malpractice claim, which was grounded in federal patent law. The Texas appellate court rejected Minton’s argument. The Texas Supreme Court reversed. The United States Supreme Court granted certiorari.

Synopsis of Rule of Law.

Federal jurisdiction over a state law claim will lie if the federal issue was: (1)  necessarily raised: (2) actually disputed; (3) not substantial; and (4) the federal issue was not capable of resolution in federal court without disrupting the federal-state balance approved by Congress

Facts.

Gunn represented Minton in an underlying patent infringement lawsuit, brought in federal district court. Summary judgment was entered against Minton in the  patent infringement case, in which his patent was declared invalid based on an “on sale” bar to patent recognition. Minton’s filed a motion for reconsideration, arguing that an “experimental use” exception to the “on sale” bar applied. The district court denied the reconsideration motion; the Court of Appeals affirmed. Minton then filed a state court action for legal malpractice against Gunn. The stated trial court granted summary judgment in Gunn’s favor. Minton appealed, seeking to bring the malpractice case again, this time in federal district court. He argued that the Texas state court lacked jurisdiction over his legal malpractice claim, which arouse out of the federal patent claim, so that he should be allowed to proceed anew in the malpractice action in federal court. The Texas appellate court rejected Minton’s argument. The Texas Supreme Court reversed. The United States Supreme Court granted certiorari.

Issue.

Did Minton’s legal malpractice claim arise under federal patent law?

Held.

No. Although the state court needed to determine a question of patent law to resolve the legal malpractice claim, the determination had no broad effects, would not stand as future precedent, and would not even affect the validity of Minton’s patent.

Discussion.

Federal jurisdiction over a state law claim will lie if the federal issue is:

• necessarily raised
• actually disputed
• substantial, and
• capable of resolution in federal court without disrupting the federal state balance approved by Congress.

In this case, the third and fourth criteria above were not satisfied; the federal issue was not substantial in the relevant sense and there was no reason to suppose that Congress intended to bar state courts from considering legal malpractice claims simply because they require resolution of a hypothetical patent issue.