Gunn v. Minton
133 S. Ct. 1059
| SCOTUS | 2013Background
- Minton developed TEXCEN, a computer-telecom trading system, and leased it to Stark in the mid-1990s.
- Minton subsequently applied for a patent based substantially on TEXCEN, which issued in January 2000.
- The district court held Minton’s patent invalid under the on-sale bar (35 U.S.C. §102(b)) because the TEXCEN lease occurred more than one year before the patent application.
- Minton moved for reconsideration, arguing the lease was for ongoing testing and within the experimental-use exception; the district court denied this.
- The Texas Court of Appeals held the malpractice claim’s jurisdictional question insufficient for Grable; the Texas Supreme Court reversed, recognizing the claim as properly belonging to federal court.
- The Supreme Court held that §1338(a) does not deprive state courts of jurisdiction over a state-law legal-malpractice claim tied to patent issues, applying Grable and concluding the federal question is not sufficiently substantial to warrant removal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does §1338(a) deprive state courts of jurisdiction over patent-related legal malpractice claims? | Minton: jurisdiction lies in federal court under §1338(a). | Gunn: state courts retain jurisdiction. | No; §1338(a) does not strip state courts of jurisdiction. |
| Does Minton’s malpractice claim “arise under” federal patent law under Grable? | Claim depends on the viability of the experimental-use exception. | Claim does not require federal patent-law resolution. | Does not arise under federal patent law under Grable. |
| Are Grable’s four requirements satisfied to confer jurisdiction? | Federal issue is necessarily raised, disputed, and substantial. | Issue lacks the required federal-system significance. | Not satisfied; jurisdiction not proper. |
| Is the federal-issues substantiality enough to impact federal-state balance? | Uniform patent-law administration warrants federal forum. | Hypothetical patent issue lacks broad federal significance. | Not substantial enough to override state court jurisdiction. |
| Would allowing state courts to decide this case undermine uniform patent-law development? | State rulings could affect patent-law uniformity. | Federal courts already handle actual patent cases; state rulings wouldn’t bind future patent law. | No, Grable not satisfied; balance preserved. |
Key Cases Cited
- Grable & Sons Metal Products, Inc. v. Darue Engineering & Mfg., 545 U.S. 308 (U.S. 2005) (test for arising-under jurisdiction in state-law claims)
- Empire HealthChoice Assurance, Inc. v. McVeigh, 547 U.S. 677 (U.S. 2006) (substantial federal interest required for arising-under jurisdiction)
- Smith v. Kansas City Title & Trust Co., 255 U.S. 180 (U.S. 1921) (classic example of arising under patent-law context)
- Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, LLP, 504 F.3d 1262 (2d Cir. 2007) (federal-interest in uniform patent-law application)
- Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (U.S. 1989) (uniformity in patent-law development supports exclusive federal jurisdiction)
- Tafflin v. Levitt, 493 U.S. 455 (U.S. 1990) (federal-question determinations applied in state-law claims)
- New Marshall Engine Co. v. Marshall Engine Co., 223 U.S. 473 (U.S. 1912) (distinguishes questions arising under patent laws from general questions)