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www iptoday com intellectual property today news register login home issues news classified jobs reports poster subscribe links contact rfc express 2015 top patent firms 2014 top trademark firms advertising opportunities click here back to intellectual property news special feature shot down by the gunn the supreme court rules in favor of leaving malpractice cases involving underlying patent issues with state courts wednesday february 27 2013 by mike sellers dale wainwright and michael samardzjia of bracewell giuliani on february 20 2013 the supreme court issued its opinion in the case of gunn v minton 1 the heart of this matter is whether the state based malpractice action based upon an underlying patent infringement lawsuit may be heard in state court or whether it must be heard in federal court because it arises under federal question jurisdiction our previous reports have examined the history of the case as it has moved through the texas courts to the supreme court including petitioners and respondent s briefs associated amicus curiae briefs and the oral argument before the court 2 the decision in summary the court found in its 9 0 decision that the respondent the inventor vernon minton failed to establish arising under subject matter jurisdiction based upon section 1338 a for the texas professional malpractice action against jerry gunn and several law firms chief justice roberts delivered the unanimous opinion of the court 3 the court acknowledges that a special and small category of cases can arise under federal jurisdiction even when federal law does not create original jurisdiction 4 to determine if this is one of those cases the case needs to raise a federal issue that is necessary actually disputed substantial and capable of resolution in federal court without disrupting the federal state balance approved by congress in addition upon meeting these four conditions consideration is given to congress intended division of labor between the state and federal courts 5 in analyzing the state based malpractice action with an underlying patent infringement suit versus the grable factors the court states that we are comfortable concluding that state legal malpractice claims based on underlying patent matters will rarely if ever arise under federal patent law for purposes of 1338 a 6 after passing quickly through the first two grable elements necessary and disputed the court addresses the element of substantiality of the issue presented the court identifies problems not only with the texas supreme court s analysis of substantiality in minton but also the analysis of the federal circuit in the opinion from air measurement 7 as our past cases show however it is not enough that the federal issue be significant to the particular parties in the immediate suit that will always be true when the state claim necessarily raise s a disputed federal issue as grable separately requires the substantiality inquiry under grable looks instead to the importance of the issue to the federal system as a whole 8 the court turns to grable and smith 9 and further differentiates this case in showing that the importance of the question to the parties alone is not enough it must be important to the validity of the government s action or the law 10 in addition the hypothetical nature of the causation element of a malpractice action the case within a case or suit within a suit simply does not make the patent infringement or patent prosecution issue substantial no matter how the state courts resolve that hypothetical case within a case it will not change the real world result of the prior federal patent litigation minton s patent will remain invalid 11 the court expressed reassurance that non hypothetical patent cases have original and exclusive jurisdiction in federal courts under 28 u s c 1338 a and if any novel question emerges from the state based case within a case analysis that the question would eventually be settled by a federal court 12 in regards to the expertise given in federal courts and administrative agencies towards patents the court simply did not find the argument that their mere existence endowed patent legal issues in this hypothetical context with substantiality the court expressed its full confidence that state courts can handle the interpretation of patent law for non federal issues b ut the possibility that a state court will incorrectly resolve a state claim is not by itself enough to trigger the federal courts exclusive patent jurisdiction even if the potential error finds its root in a misunderstanding of patent law 13 the court also cites to the critical role that states play in administrating their attorneys acknowledging the special burden that states play in maintaining the professional standards of their members the court was not presented with a reason that would undermine this critical state function especially in light that the patent issue is only a hypothetical one 14 in concluding the court found that any decision of the patent matter in gunn would not have a broad effect and therefore the issue simply did not necessitate federal court intervention 15 the effects of the decision the immediate effect for jerry gunn and the other petitioners is that the malpractice case against them is effectively over after 9 years 16 upon remand the texas supreme court will likely adopt the decision originally given in minton at the ft worth court of appeals which found a lack of substantially and a conflict with the federal state balance 17 the gunn opinion effectively overturns both air measurement and immunocept 18 the federal circuit s version of the grable test and validates the opinions given in new tek i ii 19 which are from the nebraska supreme court in 2005 and 2008 that assert state dominion over malpractice actions even in the light of an underlying patent issue the court cited air measurement several times and indicated what the proper substantiality and federal state balance analysis should have been 20 the grable analysis given in both air measurement and immunocept have been used in dozens of other suits since 2007 both in state and federal courts to remove patent malpractice cases from the state courts and to prevent remand back to state court 21 any current use of minton and air measurement in non patent related cases will likely be immediately challenged 22 the supreme court s opinion also vindicates the dissenting and concurring opinions given by justice kathleen o malley in the spring of 2012 justice o malley s dissenting opinion for the denial of en banc rehearing in byrne 23 and her concurring and dissenting opinions in several other patent malpractice cases that quickly followed 24 provided the most salient arguments that there is a problem with the federal circuit s analysis of substantiality and the federal state balance for petitioner gunn it is now likely that byrne which is on petition for certiorari with the court 25 will likely be remanded back to the federal circuit with instructions to follow the decision as presented in gunn the supreme court s decision in gunn is available at the court s website 26 if your company has questions about or cases involving arising under jurisdiction please contact any of the bracewell giuliani attorneys listed for more information regarding this topic 1 gunn v minton 568 u s ___ no 11 1118 u s feb 20 2013 reversing and remanding minton v gunn 355 s w 3d 634 tex 2011 2 mike sellers et al gunning for the supreme court a substantial case arising from texas that means more than you think oct 9 2012 available here mike sellers et al opening shots in gunn v minton the petitioner s brief and several amici curiae briefs in support dec 27 2012 available here mike sellers et al returning fire the respondent s brief and several supporting amicus curiae briefs in gunn v minton jan 10 2013 available here terrorizing patent practitioners highlights from oral argument at the supreme court for gunn v minton feb 5 2013 available here 3 gunn 568 u s ___ no 11 1118 slip op at 1 4 gunn 568 u s ___ no 11 1118 slip op at 5 6 quoting from empire healthchoice assurance inc v mcveigh 547 u s 677 699 2006 5 gunn 568 u s ___ no 11 1118 slip op at 5 6 citing to grable sons metal products inc v darue eng manuf 545 u s 308 314 2005 6 gunn 568 u s ___ no 11 1118 slip op at 6 7 7 air measurement tech inc v akin gump strauss hauer feld llp 504 f 3d 1262 fed cir 2007 8 gunn 568 u s ___ no 11 1118 slip op at 8 emphasis added 9 smith v kansas city title trust co 255 u s 180 1921 challenge to constitutional validity of federally issued bonds 10 gunn 568 u s ___ no 11 1118 slip op at 9 11 gunn 568 u s ___ no 11 1118 slip op at 9 10 emphasis added 12 gunn 568 u s ___ no 11 1118 slip op at 10 13 gunn 568 u s ___ no 11 1118 slip op at 11 12 14 gunn 568 u s ___ no 11 1118 slip op at 12 15 gunn 568 u s ___ no 11 1118 slip op at 13 16 see minton v gunn no 048 207288 04 48th dist ct tarrant co tex sep 19 2006 order suit filed in 2004 17 see minton v gunn 301 s w 3d 702 708 10 tex app fort worth 2009 rev d 355 s w 3d 634 tex 2011 18 see immunocept llc v fulbright jaworski llp 504 f 3d 1281 fed cir 2007 19 see new tek manuf v beehner 270 n w 2d 336 neb 2005 new tek i hypothetical patent issue do not provoke exclusive federal patent jurisdiction new tek manuf v beehner 751 n w 2d 135 neb 2008 new tek ii air measurement and immunocept do not change court s analysis 20 gunn 568 u s ___ no 11 1118 slip op at 4 8 and 11 12 21 see e g warrior sports v dickinson wright p l l c 631 f 3d 1367 fed cir vacating and remanding 632 f supp 2d 694 e d mich 2009 finding no federal standing under grable for malpractice action on a lapsed patent landmark screens llc v morgan lewis bockius llp 107 cal rptr 3d 373 cal app 6th dist 2010 dismissed malpractice claims based upon failure to file a divisional application using air measurement analysis 22 see e g reserve management co v willkie farr gallagher llp no 11 civ 7045 pgc s d n y sept 25 2012 professional negligence in for advice to an investment management company citing to minton 23 byrne v wood herron evans llp 676 f 3d 1024 1027 41 per curiam fed cir 2012 denial of en banc rehearing o malley j dissenting 24 memorylink corp v motorola inc 676 f 3d 1051 fed cir 2012 denial of petition for reh r en banc o malley dissenting uspps ltd v avery dennison corp 676 f 3d 1341 fed cir 2012 per curium o malley concurring landmark screens llc v morgan lewis bockius llp 676 f 3d 1354 fed cir 2012 o malley concurring minkin v gibbons p c 680 f 3d 1341 fed cir 2012 o malley concurring 25 byrne v wood herron evans llp 676 f 3d 1024 fed cir 2012 petition for cert filed u s june 8 2012 no 11 1497 26 http www supremecourt gov opinions 12pdf 11 1118_b97c pdf back to intellectual property news looking for sale auction executive search jobs blogs expert witness ip law firms patent tm searches patent drafting patent translations situations wanted 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