Gunn v. Minton
October 5, 2012
Case #: 11-1118
Court Below: Supreme Court of Texas, 355 S.W.3d 634 (2011)
Full Text Opinion: http://www.supreme.courts.state.tx.us/historical/2011/dec/100141.pdf
Civil Procedure: Whether federal courts possess exclusive subject-matter jurisdiction over state-based legal malpractice claims that require application of federal patent law.
Federal courts have exclusive jurisdiction over any civil action relating to patents under 28 U.S.C. § 1338. This includes jurisdiction over suits arising under laws relating to patents. Respondent brought a legal malpractice claim in state court against former attorney Petitioners alleging that they negligently failed to timely plead the experimental use exception to patent infringement. The trial court granted summary judgment in favor of Petitioners and Respondent appealed. While that appeal was pending, the Court of Appeals for the Federal Circuit decided two cases holding that federal courts have exclusive jurisdiction over all legal malpractice suits involving underlying patent matters. Based on those two cases, Respondent argued that the legal malpractice claims should be within the exclusive jurisdiction of the federal courts. The state appeals court rejected that argument. On appeal, the Supreme Court of Texas held that respondents legal malpractice claims did fall under federal jurisdiction because in order to determine whether the attorney had committed malpractice it was necessary to resolve whether the experimental use exception applied in the underlying patent infringement suit.
On appeal, Petitioners argue that the standard for federal courts to take “arising under” jurisdiction requires the federal issue to be substantial and one that federal courts can take without disturbing the balance between state and federal courts. Petitioners also urge that applying the “arising under” jurisdiction broadly floods the federal courts with matters best decided by state courts.