568 U.S. 251 (2013), 11-1118, Gunn v. Minton

CourtUnited States Supreme Court
Writing for the CourtRoberts, C. J.
Citation568 U.S. 251,133 S.Ct. 1059,185 L.Ed.2d 72,105 U.S.P.Q.2d 1665,81 U.S.L.W. 4085,24 Fla.L.Weekly Fed. S 39
Docket Number11-1118
Date20 February 2013
PartiesJERRY W. GUNN, et al., Petitioners v. VERNON F. MINTON

Page 251

568 U.S. 251 (2013)

133 S.Ct. 1059, 185 L.Ed.2d 72, 81 U.S.L.W. 4085, 105 U.S.P.Q.2d 1665, 24 Fla.L.Weekly Fed. S 39

JERRY W. GUNN, et al., Petitioners

v.

VERNON F. MINTON

No. 11-1118

United States Supreme Court

February 20, 2013

Argued January 16, 2013.

ON WRIT OF CERTIORARI TO THE SUPREME COURT OF TEXAS

Minton v. Gunn, 355 S.W.3d 634, (Tex., 2011)

SYLLABUS

[185 L.Ed.2d 75] [133 S.Ct. 1060] Petitioner attorneys represented respondent Minton in a federal patent infringement suit. The District Court declared Minton's patent invalid under the " on sale" bar since he had leased his interactive securities trading system to a securities brokerage " more than one year prior to the date of the [patent] application." 35 U.S.C. § 102(b). In a motion for reconsideration, Minton argued for the first time that the lease was part of ongoing testing, and therefore fell within the " experimental use" exception to the on-sale bar. The District Court denied the motion and the Federal Circuit affirmed, concluding that the District Court had appropriately held that argument waived. Convinced that his attorneys' failure to timely raise the argument cost him the lawsuit and led to the invalidation of his patent, Minton brought a legal malpractice action in Texas state court. His former attorneys argued that Minton's infringement claims would have failed even if the experimental-use argument had been timely raised, and the trial court agreed. On appeal, Minton claimed that the federal district courts had exclusive jurisdiction over claims like his under 28 U.S.C. § 1338(a), which provides for exclusive federal jurisdiction over any case " arising under any Act of Congress relating to patents." Minton argued that the state trial court had therefore lacked jurisdiction, and he should be able to start over with his malpractice suit in federal court. [133 S.Ct. 1061] Applying the test of Grable & Sons Metal Products, Inc. v. Darue Engineering & Mfg., 545 U.S. 308, 125 S.Ct. 2363, 162 L.Ed.2d 257, the Texas Court of Appeals rejected Minton's argument, proceeded to the merits, and determined that Minton had failed to establish experimental use. The Texas Supreme Court reversed, concluding that the case properly belonged in federal court because the success of Minton's malpractice claim relied upon a question of federal patent law.

Held: Section § 1338(a) does not deprive the state courts of subject matter jurisdiction over Minton's malpractice claim. Pp. ___ - ___, 185 L.Ed.2d, at 78-84.

(a) Congress has authorized the federal district courts to exercise original jurisdiction over " any civil action arising under any Act of Congress relating to patents," and further decreed that " [n]o State court shall have jurisdiction over any [such] claim." § 1338(a). Because federal law did not create the cause of action asserted by Minton's legal malpractice claim, the claim can " aris[e] under" federal patent law only if it " necessarily raise[s] a stated federal issue, actually disputed and

Page 252

substantial, which a federal forum may entertain without disturbing any congressionally [185 L.Ed.2d 76] approved balance of federal and state judicial responsibilities." Grable, 545 U.S., at 314, 125 S.Ct. 2363, 162 L.Ed.2d 257. Pp. ___ - ___, 185 L.Ed.2d, at 78-80.

(b) Applying Grable 's inquiry here, it is clear that Minton's legal malpractice claim does not arise under federal patent law. Pp. ___ - ___, 185 L.Ed.2d, at 80-83.

(1) Resolution of a federal patent question is " necessary" to Minton's case. To prevail on his claim, Minton must show that an experimental-use argument would have prevailed if only petitioners had timely made it in the earlier patent litigation. That hypothetical patent case within the malpractice case must be resolved to decide Minton's malpractice claim. P. ___, 185 L.Ed.2d, at 80.

(2) The federal issue is also " actually disputed." Minton argues that the experimental-use exception applied, which would have saved his patent from the on-sale bar; petitioners argue that it did not. Pp. ___ - ___, 185 L.Ed.2d, at 80.

(3) Minton's argument founders, however, on Grable 's substantiality requirement. The substantiality inquiry looks to the importance of the issue to the federal system as a whole. Here, the federal issue does not carry the necessary significance. No matter how the state courts resolve the hypothetical " case within a case," the real-world result of the prior federal patent litigation will not change. Nor will allowing state courts to resolve these cases undermine " the development of a uniform body of [patent] law." Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 162, 109 S.Ct. 971, 103 L.Ed.2d 118. The federal courts have exclusive jurisdiction over actual patent cases, and in resolving the nonhypothetical patent questions those cases present they are of course not bound by state precedents. Minton suggests that state courts' answers to hypothetical patent questions can sometimes have real-world effect on other patents through issue preclusion, but even assuming that is true, such " fact-bound and situation-specific" effects are not sufficient to establish arising under jurisdiction, Empire HealthChoice Assurance, Inc. v. McVeigh, 547 U.S. 677, 701, 126 S.Ct. 2121, 165 L.Ed.2d 131. Finally, the federal courts' greater familiarity with patent law is not enough, by itself, to trigger the federal courts' exclusive patent jurisdiction. Pp. ___ - ___, 185 L.Ed.2d, at 80-83.

(4) It follows from the foregoing that Minton does not meet Grable' s fourth requirement, which is concerned with the appropriate federal-state balance. There is no reason to suppose that Congress [133 S.Ct. 1062] meant to bar from state courts state legal malpractice claims simply because they require resolution of a hypothetical patent issue. P. ___, 185 L.Ed.2d, at 83.

355 S.W.3d 634, reversed and remanded.

Jane Webre argued the cause for petitioners.

Thomas M. Michel argued the cause for respondent.

OPINION

Page 253

Roberts, C. J.

Federal courts have exclusive jurisdiction over cases " arising under [185 L.Ed.2d 77] any Act of Congress relating to patents." 28 U.S.C. § 1338(a). The question presented is whether a state law claim alleging legal malpractice in the handling of a patent case must be brought in federal court.

I

In the early 1990s, respondent Vernon Minton developed a computer program and telecommunications network designed to facilitate securities trading. In March 1995, he leased the system--known as the Texas Computer Exchange Network, or TEXCEN--to R. M. Stark & Co., a securities brokerage. A little over a year later, he applied for a patent for an interactive securities trading system that was based

Page 254

substantially on TEXCEN. The U.S. Patent and Trademark Office issued the patent in January 2000.

Patent in hand, Minton filed a patent infringement suit in Federal District Court against the National Association of Securities Dealers, Inc. (NASD) and the NASDAQ Stock Market, Inc. He was represented by Jerry Gunn and the other petitioners. NASD and NASDAQ moved for summary judgment on the ground that Minton's patent was invalid under the " on sale" bar, 35 U.S.C. § 102(b). That provision specifies that an inventor is not entitled to a patent if " the invention was . . . on sale in [the United States], more than one year prior to the date of the application," and Minton had leased TEXCEN to Stark more than one year prior to filing his patent application. Rejecting Minton's argument that there were differences between TEXCEN and the patented system that precluded application of the on-sale bar, the District Court granted the summary judgment motion and declared Minton's patent invalid. Minton v. National Assn. of Securities Dealers, Inc., 226 F.Supp.2d 845, 873, 883-884 (ED Tex. 2002).

Minton then filed a motion for reconsideration in the District Court, arguing for the first time that the lease agreement with Stark was part of ongoing testing of TEXCEN and therefore fell within the [133 S.Ct. 1063] " experimental use" exception to the on-sale bar. See generally Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 64, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998) (describing the exception). The District Court denied the motion. Minton v. NASD, No. 9:00-cv-00019 (ED Tex., July 15, 2002).

Minton appealed to the U.S. Court of Appeals for the Federal Circuit. That court affirmed, concluding that the District Court had appropriately held Minton's experimental-use argument waived. See Minton v. NASD, 336 F.3d 1373, 1379-1380 (CA Fed. 2003).

Page 255

Minton, convinced that his attorneys' failure to raise the experimental-use argument earlier had cost him the lawsuit and led to invalidation of his patent, brought this malpractice action in Texas state court. His former lawyers defended on the ground that the lease to Stark was not, in fact, for an experimental use, and that therefore Minton's patent infringement claims would have failed even if the experimental-use argument had been timely raised. The trial court agreed, holding that Minton had put forward " less than a scintilla of proof" that the lease had been for an experimental purpose. App. 213. It accordingly granted summary judgment to Gunn and the other lawyer defendants.

[185 L.Ed.2d 78] On appeal, Minton raised a new argument: Because his legal malpractice claim was based on an alleged error in a patent case, it " aris[es] under" federal patent law for purposes of 28 U.S.C. § 1338(a). And because, under § 1338(a), " [n]o State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents," the Texas court--where Minton had originally brought his...

To continue reading

Request your trial
72 practice notes
  • Giving the Federal Circuit a run for its money: challenging patents in the PTAB.
    • United States
    • Notre Dame Law Review Vol. 91 Nbr. 1, November - November 2015
    • November 1, 2015
    ...the boundaries of a doctrine that will "have a significant future effect"). (380) ASARCO, 490 U.S. at 622. (381) Cf. Gunn v. Minton, No. 133 S. Ct. 1059 (2013). In Gunn, the Supreme Court was not concerned about the effect of a state court decision on a patent law matter. Unlike the PTAB, w......
  • Appeals
    • United States
    • The practitioner’s guide to trials before the patent trial and appeal board
    • October 31, 2016
    ...prior30the court took great care in the context of the AIA to perform the four-part jurisdictional analysis required by Gunn v. Minton, 133 S. Ct. 1059 (2013).31Thus, a claim attacking the constitutionality of the AIA is one arising under that Act of Congress within the meaning of 28 U.S.C.......
  • From the particular to the general: three federal rules and the jurisprudence of the Rehnquist and Roberts courts.
    • United States
    • University of Pennsylvania Law Review Vol. 162 Nbr. 7, June - June 2014
    • June 1, 2014
    ...in Perspective: The Old and the New in Federal Jurisdictional Reform, 156 U. PA. L. REV. 1823 (2008). (82) See, e.g., Gunn v. Minton, 133 S. Ct. 1059, 1068-69 (2013) (unanimous) (holding that certain actions involving patents could be brought in state court and were not within the exclusive......
  • Our (national) federalism.
    • United States
    • Yale Law Journal Vol. 123 Nbr. 6, April - April 2014
    • April 1, 2014
    ...concern, see Shoshone Mining Co. v. Rutter, 177 U.S. 505, 507 (1900). For the Court's most recent invocation of it, see Gunn v. Minton, 133 S. Ct. 1059, 1068 (2013). (168.) Oberlander v. Perales, 740 F.ad 116, 119 (2d Cir. 1984); accord Concourse Rehabilitation & Nursing Ctr. v. Wing, 1......
  • Request a trial to view additional results
1711 cases
  • 401 F.Supp.3d 348 (E.D.N.Y. 2019), 18-CV-6655 (MKB), Belmont v. JetBlue Airways Corp.
    • United States
    • Federal Cases United States District Courts 2nd Circuit United States District Court (Eastern District of New York)
    • August 13, 2019
    ...automatically confer federal question jurisdiction," Merrell Dow, 478 U.S. at 813, 106 S.Ct. 3229; see also Gunn v. Minton, 568 U.S. 251, 258, 133 S.Ct. 1059, 185 L.Ed.2d 72 (2013) (finding that the third exception, which arises when a state law claim involves a ......
  • 41 F.Supp.3d 604 (W.D.Ky. 2014), 3:13-CV-01044-CRS-DW, Goffner v. Medtronic, Inc.
    • United States
    • Federal Cases United States District Courts 6th Circuit United States District Court of Western District of Kentucky
    • August 22, 2014
    ...action' made the question 'an important issue of federal law that sensibly belong[ed] in a federal court.'" Gunn v. Minton, 133 S.Ct. 1059, 1066, 185 L.Ed.2d 72 (2013) (quoting Grable, 545 U.S. at 315) (alterations in The Court recently revisited this framework in Gunn v. Minton, 133 S......
  • 41 F.Supp.3d 633 (W.D.Ky. 2014), 3:13-CV-01058-CRS-DW, Beavers v. Medtronic, Inc.
    • United States
    • Federal Cases United States District Courts 6th Circuit United States District Court of Western District of Kentucky
    • August 22, 2014
    ...action' made the question 'an important issue of federal law that sensibly belong[ed] in a federal court.'" Gunn v. Minton, 133 S.Ct. 1059, 1066, 185 L.Ed.2d 72 (2013) (quoting Grable, 545 U.S. at 315) (alterations in The Court recently revisited this framework in Gunn v. Minton, 133 S......
  • 450 F.Supp.3d 700 (E.D.Tex. 2020), C. A. 4:19-CV-570-SDJ, ESI/Employee Solutions, L.P. v. City of Dallas
    • United States
    • Federal Cases United States District Courts 5th Circuit United States District Court of Eastern District Texas
    • March 30, 2020
    ...are courts of limited jurisdiction,' possessing `only that power authorized by Constitution and statute.'" Gunn v. Minton, 568 U.S. 251, 256, 133 S.Ct. 1059, 185 L.Ed.2d 72 (2013) (quoting Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S. 375, 377, 114 S.Ct. ......
  • Request a trial to view additional results
56 firm's commentaries
  • Patent Law and the Supreme Court: Patent Certiorari Petitions Pending
    • United States
    • Mondaq United States
    • January 31, 2017
    ...federal patent questions that are necessarily implicated by state law claims, contravened this Court's direction in Gunn v. Minton, 133 S. Ct. 1059 (2013), to "hew closely to the pertinent federal precedents," by (1) failing to perform necessary patent claim construction, (2) disregarding t......
  • When They Don’t Have Anything, They’ll Try Anything
    • United States
    • LexBlog United States
    • December 9, 2015
    ...latest iteration of the test for federal question jurisdiction in the absence of an express federal claim is found in Gunn v. Minton, 133 S. Ct. 1059 (2013). [F]ederal jurisdiction over a state law claim will lie if a federal issue is: (1) necessarily raised, (2) actually disputed, (3) subs......
  • Patent Law and the Supreme Court: Patent Certiorari Petitions Denied in 2017 (Originally published February 21, 2017)
    • United States
    • Mondaq United States
    • March 6, 2017
    ...federal patent questions that are necessarily implicated by state law claims, contravened this Court's direction in Gunn v. Minton, 133 S. Ct. 1059 (2013), to "hew closely to the pertinent federal precedents," by (1) failing to perform necessary patent claim construction, (2) disregarding t......
  • In a Victory for the “Drone Slayer,” Federal Judge Rejects Pilot’s Attempt to Create Federal Question Jurisdiction
    • United States
    • JD Supra United States
    • March 29, 2017
    ...548, 554 (6th Cir. 2012). “[A] case arises under federal law when federal law creates the cause of action asserted.” Gunn v. Minton, 133 S. Ct. 1059, 1064 (2013) (citing Am. Well Works Co. v. Layne & Bowler Co., 241 U.S. 257, 260 (1916)). The Supreme Court has also “identified a ‘special an......
  • Request a trial to view additional results
16 books & journal articles
  • The Supreme Court goes to the dogs: reconciling Florida v. Harris and Florida v. Jardines.
    • United States
    • Albany Law Review Vol. 77 Nbr. 2, December 2013
    • December 22, 2013
    ...to investigate the home and its immediate surroundings is a 'search' within the meaning of the Fourth Amendment."), with Harris, 133 S. Ct. at 1059 (holding that the narcotics-detection dog's free air sniff of the defendant's vehicle was not a search in and of itself, but merely provid......
  • The Supreme assimilation of patent law.
    • United States
    • Michigan Law Review Vol. 114 Nbr. 8, June 2016
    • June 1, 2016
    ...504 F.3d at 1272; see Grable, 545 U.S. at 315. (169.) Immunocept, 504 F.3d at 1285-86. (170.) Air Measurement, 504 F.3d at 1272. (171.) 133 S. Ct. 1059 (2013). But see Grossi, supra note 35, at 1013-18 (criticizing the holding in Gunn v. Minton as applying a mechanical test instead of reaso......
  • From the particular to the general: three federal rules and the jurisprudence of the Rehnquist and Roberts courts.
    • United States
    • University of Pennsylvania Law Review Vol. 162 Nbr. 7, June - June 2014
    • June 1, 2014
    ...in Perspective: The Old and the New in Federal Jurisdictional Reform, 156 U. PA. L. REV. 1823 (2008). (82) See, e.g., Gunn v. Minton, 133 S. Ct. 1059, 1068-69 (2013) (unanimous) (holding that certain actions involving patents could be brought in state court and were not within the exclusive......
  • Don't get thrown out on your derriere: common mistakes in establishing federal subject-matter jurisdiction.
    • United States
    • Defense Counsel Journal Vol. 83 Nbr. 2, April 2016
    • April 1, 2016
    ...and trademark). (65) See Grable & Sons Metal Prods., Inc. v. Darue Eng'g & Mfg., 545 U.S. 308 (2005), and Gunn v. Minton, 133 S. Ct. 1059 (2013). (66) Gunn, 133 S. Ct. at 1064. (67) Id. (68) See Shoshone Mining Co. v. Rutter, 177 U.S. 505 (1900) (even though federal law established ......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT