1-10 Patent Cases

• Jurisdiction: United States

1-10 Patent Cases

In Gunn v. Minton,³⁴⁵ the U.S. Supreme Court held that state courts can hear legal malpractice cases arising from the alleged mishandling of patent lawsuits, even though patent claims are an exclusively federal subject:

As we recognized a century ago, "[t]he Federal courts have exclusive jurisdiction of all cases arising under the patent laws, but not of all questions in which a patent may be the subject-matter of the controversy." New Marshall Engine Co. v. Marshall Engine Co., 223 U.S. 473, 478, 32 S.Ct. 238, 56 L.Ed. 513 (1912). In this case, although the state courts must answer a question of patent law to resolve Minton's legal malpractice claim, their answer will have no broader effects. It will not stand as binding precedent for any future patent claim; it will not even affect the validity of Minton's patent. Accordingly, . . . Section 1338(a) does not deprive the state courts of subject matter jurisdiction.³⁴⁶

The contours of Gunn were tested in Solar Dynamics, Inc. v. Buchanan Ingersoll & Rooney, P.C.³⁴⁷ Unlike Gunn, in which the patent in question had already been deemed invalid, no determination as to the validity of the patent in Solar Dynamics had yet occurred. As a result, the trial court dismissed the malpractice action. On appeal, its decision was affirmed:

Although Solar's complaint is carefully couched as a matter of legal malpractice, the complaint necessarily invites the trial court to make initial determinations as to the patent's scope, validity, or infringement. These issues are best decided in a federal court lawsuit between Solar and an alleged infringer. . . . Similarly, for the trial court to find that Buchanan and Mr. Paradies committed legal malpractice, Solar must show, first, that the patent was invalid or that its scope was not sufficiently broad to protect Solar from its allegedly infringing competitors.³⁴⁸

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Notes:

^[345] Gunn v. Minton, 568 U.S. 251 (2013).

^[346] Gunn v. Minton, 568 U.S. 251, 264-65 (2013). Accord Alps S., LLC v. Shumaker, Loop & Kendrick,...