RESPONDENT: Vernon Minton
LOCATION: District Court of Texas, 48th Judicial District
DOCKET NO.: 11-1118
DECIDED BY: Roberts Court (2010-2016)
LOWER COURT: Supreme Court of Texas
CITATION: 568 US (2013)
GRANTED: Oct 05, 2012
ARGUED: Jan 16, 2013
DECIDED: Feb 20, 2013
Jane Webre - for the respondent
Thomas M. Michel - for the petitioners
Facts of the case
At the beginning of 1990s Vernon Minton, a securities broker in the past, created the Texas Computer Exchange Network. It was a computer program that made it possible for traders to exercise the trade transactions. The company R.M. Stark & Co. leased this software. After more than one year Minton applied for patent and it was approved and issued by the United States Patent and Trademark Office on January 11, 2000.
Sometime later Minton brought the claim against the NASDAQ and the National Association of Securities Dealers (NASD), complaining that their activities violated his rights on the patent. The companies stated that the patent is outlawed if the object that protected had been produced for sale before the granting of the license.
The district court approved the side of the defendant. However, Minton hired the new attorney to prove that his software was produced only for experimental use and this legal exception covered his case. Then he applied for reconsideration. The district trial denied the demand, but the Appeal Court confirmed the claim.
The case brief finds out that Minton brought suit against his first attorneys arguing them for professional negligence that resulted in that they didn`t prove the fact of experimental use exception of his program on the first level of the proceeding. The responder Gunn declared that they hadn`t known the fact of the commercial program distribution. Therefore the trial confirmed the side of the defendant. Then Minton filed an appellation, but the USA Appeal court implemented the practice of to pass the jurisdiction of this kind of litigation regarding patent issues to the federal level trials.
The appellant filed a claim with the purpose to exclude this case the state jurisdiction. But the court refused his application and concluded the validity of the first decision.
Despite on that, the Supreme Court of Texas excluded the Gunn v Minton from state litigation.
The case study was passed to the Supreme Court to resolve whether this subject was under the federal or state jurisdiction. The judges cited on the Grable & Sons Metal Products, Inc. v. Darue Engineering & Mfg., that established the rule that patent case should be revised in the federal courts when it caused some issued that could be resolved without the violation of federal and state authorities. Thus, under judgment in there was no federal subject in Gunn v. Minton and therefore the state court had the capacity to decide the case that was returned for state judicial proceeding.
Do the federal courts have exclusive jurisdiction in any cases that involve patent law, even when the patent issue is not the primary issue in the case?
Media for Gunn v. MintonAudio Transcription for Oral Argument - January 16, 2013 in Gunn v. Minton
Audio Transcription for Opinion Announcement - February 20, 2013 in Gunn v. Minton
John G. Roberts, Jr.:
I have our opinion this morning in case 11-1118, Gunn versus Minton.
Legal malpractice cases typically go to state court.
Patent cases must go to federal court.
So, what about a legal malpractice case that arises out of the lawyer's mishandling of a patent case?
Now, different courts gave different answers to that question, so we granted review of this case from Texas to resolve that conflict.
Now, in most cases, it's pretty easy to tell which cases should go where.
If it's a state law that lets you sue, as in a malpractice case, you go to state court.
If it's federal law that gives you the right to sue, as in a patent infringement case, you go to federal court.
But there is a tiny group of cases where you can go to federal court even though it's the state law that lets you sue.
That's when The Court has to rule on a very important federal issue to decide the state law claim.
We had a case about a hundred years ago that has become the classic example of this.
The claim was that a bank could not purchase certain bonds because they were invalid.
That's a state law claim.
It should go to state court.
But the reason that the bonds were claimed to be invalid was that they were issued by the federal government and the federal government acted unconstitutionally in issuing them.
Now, in that case, we said that the federal issue had such broader significance to the federal system as a whole that the case could go to federal court even though the right to sue came from state law.
But this case isn't like that.
Now, it's true in deciding whether the lawyers were guilty of malpractice, the state court will have to opine on how the lawyers should've handled the patent case, a federal issue, but that will not have a significant effect on the federal patent system.
The patent case itself is over, the plaintiff lost.
Now, he may win his case claiming that his lawyers messed up, but that won't change the result in the patent case, nor will there be any broader effect on federal patent law.
Even if the state court makes a mistake in explaining how the patent case should've been handled, that will not disrupt the uniformity of federal patent law.
If the issue comes up a lot, the federal courts, where actual patent cases are brought, will clear out any confusion soon enough.
If the issue does not come up a lot, it was not an important one for the system as a whole in the first place.
So the state legal malpractice case goes to state court even though it is about malpractice in a federal patent case.
Our opinion is unanimous.