In Gunn v. Minton, 2013 WL 610193 (Feb. 20, 2013), a unanimous United States Supreme Court determined that state courts can address legal malpractice disputes even though the underlying action may turn on issues involving patents. As expected, this ruling, which significantly narrowed federal court jurisdiction, is likely to impact many cases pending in district courts around the country.
As an example, in a case pending against Boston Scientific in district court, Boston Scientific immediately challenged the district court's jurisdiction after the Gunn decision. "Just seven days before the jury trial schedule in this case, the United States Supreme Court handed down Gunn v. Minton, 2013 WL 610193 (Feb. 20, 2013). In a letter dated February 21, 2013, Boston Scientific brought this case to the Court's attention, suggesting that under Gunn, the Court lacks jurisdiction over this case. By response dated February 22, 2013, Mirowski contended that jurisdiction existed and urged the Court to hold fast to the trial date."
As explained by the district court the decision in Gunn justified vacating the trial date to address fully the jurisdictional issue. "In reviewing the parties' letters and conducting its own preliminary review, the Court has come to the conclusion that there is a genuine dispute as to its jurisdiction. The heavy import of this issue demands vacating the trial and ordering additional briefing on the subject. This is regrettable, as the parties have invested significant financial and intellectual capital in this case; the Court has aw well. However, the Court and the parties must pause to undertake a measured and careful analysis of the issue so that further capital is not squandered."
The district court then noted it would have to review the complaint to determine whether there is jurisdiction after the decision in Gunn. "As Mirowski suggest, the Court must 'dig below the surface of the complaint and look at the underlying controversy. If a well-pleaded complaint by the defendant (the 'natural' plaintiff) would have arisen under federal law, then the court has jurisdiction when the 'natural' defendant brings a declaratory-judgment suit.' NewPage Wis. Sys. Inc. v. United Steel, Paper & Forestry, 651 F.3d 775, 777-78 (7th Cir. 2011). Mirowski contends that its 'hypothetical well-pleaded complaint would have alleged the Boston Scientific's ICDs do, in fact, infringe a valid claim of the '299 patent.' However, the Court is not convinced that , given the parties' relationship, Mirowski's claim could have sounded in infringement, as opposed to breach of contract. See, e.g., January 28, 2004, Agreement, Ex. 24 to No. 127."
Accordingly, the district court determined that it would have to review the complaint to determine whether it had jurisdiction and that the trial date would have to be vacated in order to allow the parties to file briefs on the issue and for the district court to review those briefs and issue a ruling. Indeed, if the district court disagrees with Mirowski, the parties may find themselves starting over in state court.
Mirowski Family Ventures, LLC v. Boston Scientific Corporation, et al., Case No. 1:11-cv-736-WTL-DKL (S.D. Ind. Feb. 22, 2013)