By Jason Rantanen
Read the opinion here: Gunn v. Minton
This morning the Supreme Court released its opinion in Gunn v. Minton The Court held that the presence of a substantive issue of patent law did not deprive the state court of jurisdiction over the malpractice claim. Notably, the Court did not feel that allowing these claims to proceed in state court would substantially affect federal patent law.
From the syllabus:
(3) Minton’s argument founders, however, on Grable’s substantiality requirement. The substantiality inquiry looks to the importance of the issue to the federal system as a whole. Here, the federal issue does not carry the necessary significance. No matter how the state courts resolve the hypothetical “case within a case,” the real-world result of the prior federal patent litigation will not change. Nor will allowing state courts to resolve these cases undermine “the develop- ment of a uniform body of [patent] law.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 162. The federal courts have exclusive jurisdiction over actual patent cases, and in resolving the nonhypothetical patent questions those cases present they are of course not bound by state precedents. Minton suggests that state courts’ answers to hypothetical patent questions can sometimes have real-world effect on other patents through issue preclusion, but even assuming that is true, such “fact-bound and situation-specific” effects are not sufficient to establish arising under jurisdiction, Empire HealthChoice Assurance, Inc. v. McVeigh, 547 U. S. 677, 701. Finally, the federal courts’ greater familiarity with patent law is not enough, by itself, to trigger the federal courts’ exclusive patent jurisdiction.
I’d like the next SCOTUS to be appointed based on his/her experiences with having their house stormed by police in the middle of the night because a policeman’s dog “reacted” to something.
What a delight to read the U.S. Supreme Court’s opinion, putting a proper perspective on arising under jurisdiction. I first became immersed in the jurisdiction issues as the Counsel of Record for the prevailing Charlie Christianson in his 1988 Supreme Court case against Colt in which the Federal Circuit’s jurisdiction was squarely addressed. At the time I immersed myself into the Congressional history and numerous cases and law review articles on the question. Joe Re’s masterful amicus brief for the AIPLA in Gunn v. Minton surely aided the Court. Joe was Judge Markey’s law clerk when I argued the Christianson jurisdiction issues in the Federal Circuit. Justice is done. Life is good.
Yes, that is what is wrong with patent law. You lot shouldn’t be permitted in front of the board without a reg. number nor in front of the fed. cir.
Wake up. Patent folks. You are not special. The genral litigator rules.
How about at least appointing the next SCOTUS based on them having training in science?
No thanks.
No surprise here, but not for the reasons that NWPA said. Under Grable, the question of experimental use was definitely not substantial. Admittedly, the trial court got the experimental use exception wrong, but the appellate courts in Texas can correct that.
The problem that led to SCOTUS taking this case has nothing to do with the Supreme Court improperly deciding patent law, it has to do with the fact that “arising under” jurisdiction where there are embedded federal issues is an unclear and hard-to-apply doctrine under Grable. This isn’t just about patent “arising under” jurisdiction, it’s about all legal malpractice claims under the general federal question statute. The effect is to keep malpractice suits out of federal courts unless they are diversity suits.
This isn’t a surprise. The SCOTUS just smacked the Fed. Cir. again. If Congress wants to fix the patent system, they should remove patent law from SCOTUS jurisdiction. The panels of the Fed. Cir. will act as circuits and the en banc court will act like the SCOTUS.
Get the SCOTUS out of patent law.
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