IP News

On Feb. 20, 2013, the Supreme Court issued a unanimous opinion in Gunn v. Minton, No. 11-1118, reversing the Texas Supreme Court's ruling that federal courts have exclusive jurisdiction over legal malpractice claims that arise out of patent infringement lawsuits. Gunn had represented Minton, a patentee, in an infringement lawsuit in the Eastern District of Texas, where Minton's patent was declared invalid on summary judgment under the “on sale” bar of 35 U.S.C. ' 102(b), due to a lease that was agreed to more than one year prior to the filing date of Minton's patent application. Gunn v. Minton, No. 2011-1118, 2013 WL 610193, at *3 (Feb. 20, 2013). After the District Court had ruled Minton's patent invalid, Minton moved for reconsideration on the grounds that the leasing arrangement fell within the “experimental use” exception of ' 102(b). Id. The District Court denied the motion for reconsideration, finding that Minton had waived the “experimental use” argument by failing to timely raise it. Id. The Federal Circuit subsequently affirmed the District Court's rulings. Id.

Thereafter, believing that the patent would not have been ruled invalid if his former attorneys had raised the “experimental use” argument, Minton brought a legal malpractice claim in Texas state court. Id. At trial, Minton's former attorneys successfully argued that Minton's patent infringement claims would have failed even if the “experimental use” argument had not been waived. Id. On appeal to the Texas Court of Appeals, Minton argued that the trial court's ruling should be dismissed, because federal courts have exclusive jurisdiction over patent malpractice claims. The Texas Court of Appeals applied the U.S. Supreme Court's test from Grable & Sons Metal Prods., Inc. v. Darue Eng'g & Mfg., 545 U.S. 308, 314 (2005) and rejected this argument in affirming the trial court. Gunn, 2013 WL 610193, at 4. However, the Texas Supreme Court, relying heavily on the Federal Circuit's precedents in Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir. 2007) and Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. 2007), reversed the Court of Appeals, finding that the success of Minton's legal malpractice claim relied upon a question of federal patent law. Gunn, 2013 WL 610193, at 4.