Gunn v. Minton

Brief Fact Summary.

Minton, represesented by Gunn, filed an action for patent infringement in federal district court. Summary judgment was granted against Minton, a reconsideration motion was denied, and the Court of Appeals affirmed. Minton then brought a state court action for legal malpractice; summary judgment was entered against him again. On appeal, Minton argued that his legal malpractice claim arose out of the federal patent claim, so that the state court lacked jurisdiction and he could proceed on the matter anew in federal court. The state appellate court affirmed; the Texas Supreme Court reversed.

Synopsis of Rule of Law.

A state law claim alleging legal malpractice in the handling of a patent case does not have to be brought in federal court; in establishing exclusive federal jurisdiction over patent claims, Congress did not mean to bar state courts from considering legal malpractice claims because they require resolution of a patent issue.

Facts.

Minton developed and held a patent for an interactive securities trading system. Represented by Gunn, he filed an action for patent infringement in federal district court. Summary judgment was granted against Minton; his patent was declared invalid by the district court based on an “on sale” bar to patent recognition. Minton argued on reconsideration that an “experimental use” exception to the “on sale” bar applied. The reconsideration motion was denied by the district court; the Court of Appeals affirmed. Minton subsequently brought a state court action for legal malpractice against his lawyers in the patent suit, alleging that their failure to raise the experimental use argument was malpractice. Summary judgment was entered against Minton. On appeal, Minton argued that his legal malpractice claim arose out of the federal patent claim; thus, the state court lacked jurisdiction and he could proceed on the matter anew in federal court. The state appellate court affirmed; the Texas Supreme Court reversed.

Issue.

Was Minton’s state law claim, which alleged legal malpractice in connection with his lawyers’ handling of the patent claim, a claim that had to be brought in federal court?

Held.

No. Minton’s legal malpractice claim did not “arise under” federal patent law.

Discussion.

The Court considered reached the unanimous conclusion that Minton’s claim did not arise under federal patent law, finding that:

• the federal issue was necessarily raised
• the federal issue was actually disputed
• the federal issue was not substantial
• the federal issue was not capable of resolution in federal court without disrupting the federal-state balance approved by Congress