TECHNOLOGY

Gunn v. Minton

Court below

The Respondent, Vernon F. Minton ("Minton"), leased a software that he developed to the National Association of Securities Dealers, Inc. ("NASD") and NASDAQ Stock Market, Inc. ("NASDAQ") and later applied for and was granted a patent for the software. Subsequently, Respondent Minton filed a patent infringement lawsuit against NASD and NASDAQ, but the trial court dismissed the lawsuit due to the "on-sale bar" rule, codified in § 102(b) of the United States Patent Act. The rule invalidates patents that apply to inventions sold more than a year prior to the application date of the patent. Minton then filed a legal malpractice lawsuit against his attorneys, Petitioner Jerry W. Gunn, et al., who represented Minton in the patent infringement case and argued that if not for Gunn's failure to raise at trial the experimental use exception to the on-sale bar, he would have won the patent infringement lawsuit. The issue in this case concerns whether the federal courts should have exclusive jurisdiction over legal malpractice claims that arise from patent litigation. Gunn argues that the federal issue in the case is too insubstantial to be heard in federal court and, furthermore, that significant state interests and Congressional intent require that the case be heard in state court. Minton claims, however, that the federal issue is substantial and that based on the federal interests and Congressional intent, this case should be decided in federal court. The Supreme Court's decision will affect the efficiency and uniformity of this country's patent law and patent-related malpractice litigation. Such effects would impact the growth and development of the technology and science industries.

Questions as Framed for the Court by the Parties

Did the Federal Circuit depart from the standard this Court articulated in Grable & Sons Metal Products, Inc. v. Darue Eng'g & Mfg., 545 U.S. 308 (2005), for "arising under" jurisdiction of the federal courts under 28 U.S.C. § 1338, when it held that state law legal malpractice claims against trial lawyers for their handling of underlying patent matters come within the exclusive jurisdiction of the federal courts? Because the Federal Circuit has exclusive jurisdiction over appeals involving patents, are state courts and federal courts strictly following the Federal Circuit's mistaken standard, thereby magnifying its jurisdictional error and sweeping broad swaths of state law claims - which involve no actual patents and have no impact on actual patent rights - into the federal courts?

[top]