Earlier this year we reported on the granting of certiorari for the case of Gunn v. Minton1 from the Supreme Court of Texas.2 The case involves a claim of attorney malpractice in an underlying patent litigation matter. The heart of the matter is whether the case can be heard in a state court or whether the malpractice case "arises under" federal question jurisdiction3 because of federal exclusive jurisdiction over patent matters, and therefore must be heard in federal court.4 ryehThe underlying patent infringement suit was complete before the malpractice suit was filed.5 The case is scheduled for oral argument before the Court on January 16, 2013.6

Although Respondent Minton’s brief is not yet available electronically, Petitioner Gunn presents several arguments to the Supreme Court to advance his position that legal malpractice claims do not come within "arising under" jurisdiction because the state's interests in regulating attorney practice and interpreting state law outweighs the "overstated" federal interest in a hypothetical patent issue, especially for a patent which has already been invalidated.7 Gunn attests that Grable8 presents the modern understanding of when an embedded federal issue is necessary, actually disputed and substantial enough, and that jurisdiction would not upset the balance of state and federal interests, such that a state law claim justifies federal jurisdiction.9 Gunn then attacks the Federal Circuit’s interpretation of Grable as given in Air Measurement10 and Immunocept,11 which the Supreme Court of Texas followed, as merely holding that a "necessary" patent issue is also automatically "substantial."12 Gunn reminds the Court that the Nebraska Supreme Court decisions in the New Tek cases13 clearly demonstrate that even a state supreme court decision does not threaten either the jurisdiction of federal courts or the interpretation of federal law when it comes to patent matters.14

Several Amicus briefs have also been filed in support of the Petitioner's position:

The American Intellectual Property Law Association (AIPLA), a national bar association representing intellectual property practitioners, advocates in their Amicus brief for the Court to reiterate the jurisdictional test of Grable and to effectively overturn all of the Federal Circuit's precedent otherwise.15 AIPLA presents an analysis of both pre- and post-Christianson16 cases and concludes that the Federal Circuit since Christianson has conflated the "necessary" and the "substantial" elements of the jurisdiction test, even after the Court provided both Grable and Empire Healthchoice17 as demonstrations of the jurisdictional test.18 AIPLA draws the Court's attention to Justice Kathleen O'Malley's dissent in Byrne19 as further evidence that the Court should be concerned regarding the pervasiveness of the Federal Circuit's precedence and should overturn it.20

Professor Ryan of Baylor University, in conjunction with several other noted legal scholars,21 advocate for the Court to take the opportunity to clarify federal procedural law by completely eliminating the second branch of "arising under" jurisdiction.22 The professors state that the bright-line test that Justice Holmes proffered in American Well Works23 is suitable in almost every circumstance for determining in which court system - state or federal - a matter should be heard.24 The professors argue that the Grable test is not a clear test but rather a vague and amorphous proposition, which is not suitable as a jurisdiction test. The Grable test generates "litigation about where to litigate."25 The professors also suggest that even in the rare circumstances where a state case has a suitable federal issue for hearing in a federal court, the matter should be heard in a state court and then, like the parties here, they can appeal to the Supreme Court and enter the federal realm there for final disposition.26

Ronald Mallen, principle author of a treatise on legal malpractice, addresses two issues in his brief to the Court: (1) does a patent law issue in a legal malpractice matter constitute a federal issue that is "actually disputed and substantial," and (2) what is the real effect of state court decisions regarding legal malpractice for a patent law matter on federal patent law?27 On the first issue, the author argues that the underlying patent issue is merely hypothetical in nature.28 Given that the patent issue is not "actually disputed and substantial," the malpractice matter incorporating it should not be handled any differently than how a state court handles other malpractice matters originating from other types of law, including from specialized courts, administrative panels, foreign and non-civil courts.29 On the second issue, the author argues that state courts routinely handle a variety of law in interpreting malpractice matters – an area where they are considered expert jurists30 – but that these opinions are rarely reported, minimizing the potential influence of any state-based malpractice decision concerning patent law practice on federal patent law.31

These briefs and the forthcoming Respondent’s brief are available for free at the American Bar Association’s "Preview of the United States Supreme Court Cases" website.32 When available electronically, we intend to report on Respondent’s brief and any Amicus briefs in support of Respondent’s position.