Patent Law Malpractice, an Issue for State Courts

(CN) - Though patent matters qualify for exclusive federal jurisdiction, state-law claims of legal malpractice against patent attorneys do not, the U.S. Supreme Court ruled.

The case stems from an unsuccessful patent infringement suit that securities broker Vernon Minton had filed in 2002 against the NASD and the NASDAQ Stock Market. Minton accused those entities of infringing on a patent he obtained in 2000 for an interactive securities trading system, but a Texas federal judge declared the patent invalid because Minton had leased the system over a year before obtaining the patent.

The Federal Circuit later shot down Minton's bid for reconsideration under the experimental use exception.

Undeterred, Minton went on to file state-law legal malpractice claims against the attorneys who handled his infringement suit: Jerry Gunn, James Wren, William Slusser and Michael Wilson.

Minton later argued that his claims strictly fell under federal jurisdiction, and he moved to have the case dismissed so that he could pursue the issue in federal court.

Eventually a majority of the Texas Supreme Court found that federal jurisdiction indeed applied.

The unanimous U.S. Supreme Court reversed Wednesday.

"There is no doubt that resolution of a patent issue in the context of a state legal malpractice action can be vitally important to the particular parties in that case," Chief Justice John Roberts wrote for the court. "But something more, demonstrating that the question is significant to the federal system as a whole, is needed. That is missing here."

Roberts applied the test described by the court's 2005 opinion in Grable & Sons Metal Products Inc. v. Darue Engineering & Mfg., and as a result, found that Minton's legal malpractice claims did not arise under federal patent law.

"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," Roberts concluded. "It will not stand as binding precedent for any future patent claim; it will not even affect the validity of Minton's patent. Accordingly, there is no 'serious federal interest in claiming the advantages thought to be inherent in a federal forum.'"

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