U.S. Supreme Court reverses Texas Supreme Court

by Jay Pate

State court had jurisdiction to hear claim that patent lawyer committed malpractice

We have previously reported on Jerry W. Gunn et al. v. Vernon F. Minton, No. 11-1118. As we noted, the case concerns the scope of federal court jurisdiction over state law claims that “necessarily” involve some question of federal law.

Convinced that his attorneys’ failure to timely raise a legal argument caused him to lose a patent law claim, Minton brought a legal malpractice action in Texas state court against his attorneys. When a judgment was entered against him and the legal malpractice case was dismissed, Minton argued the state court had lacked jurisdiction. The Texas Supreme Court agreed and held that the federal courts had exclusive jurisdiction of the case since the success of Minton’s malpractice claim relied upon a question of federal patent law. The U.S. Supreme Court has now reversed that decision.

The Supreme Court began by noting federal law did not create the cause of action asserted by Minton’s legal malpractice claim. Therefore, applying the test of Grable & Sons Metal Products, Inc. v. Darue Engineering & Mfg., 545 U.S. 308 (2005), the claim can “arise under” federal patent law only if it “necessarily raise[s] a stated federal issue, actually disputed and substantial, which a federal forum may entertain without disturbing any congressionally approved balance of federal and state judicial responsibilities.”

The court agreed with Minton that resolution of a federal patent question was “necessary” to his case. To prevail on his claim, Minton had to show that an experimental-use argument would have prevailed if only petitioners had timely made it in the earlier patent litigation. That hypothetical patent case within the malpractice case had to be resolved to decide Minton’s malpractice claim.

However, the Supreme Court held that Minton’s argument foundered on Grable ‘s “substantiality” requirement:

…[T]he federal issue in this case is not substantial in the relevant sense. In reaching the opposite conclusion, the Supreme Court of Texas focused on the importance of the issue to the plaintiff’s case and to the parties before it. […] As our past cases show, however, it is not enough that the federal issue be significant to the particular parties in the immediate suit; that will always be true when the state claim “necessarily raise[s]” a disputed federal issue, as Grable separately requires. The substantiality inquiry under Grable looks instead 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 development of a uniform body of [patent] law.”

Patent Law Cases and Our Law Firm

At Heygood, Orr & Pearson, our attorneys have handled numerous patent matters including prosecuting claims for infringement, as well as for interfered-with patent rights. We have handled claims brought by a large local company for infringement of its rail car patent, claims by a local inventor for infringement of her patent for a childcare product and claims by an Israeli company against a Fortune 500 company for infringement of its wireless technology patent. Our firm has also represented a client suing a large American pharmaceutical company for interfering with its patent rights to liposome technology.

Our attorneys are capable of litigating patent infringement claims throughout the country. In addition, firm attorney John “Jay” Pate is licensed to prosecute patents before the U.S. Patent and Trademark Office.

Beyond our specific experience in the field of intellectual property, our ability to prosecute patent infringement action is aided by our extensive trial experience in general. While technical knowledge and familiarity with patent rules is a must for attorneys handling patent infringement claims, there is no substitute for courtroom experience. At Heygood, Orr & Pearson, our seasoned litigators have the experience to take even the most complex patent case and explain it in terms a jury can understand. We have a track record of proven success representing businesses large and small. Several of our trial lawyers are board certified* and many of them have been selected as Super Lawyers in the State of Texas** for several years in a row. Our firm is AV rated, the highest legal and ethical ranking available from the leasing law firm ranking service, Martindale-Hubbell.

If you or your company is in need of representation in an intellectual property matter, contact us for a free consultation by calling toll-free at 1-877-446-9001, or by completing the free case evaluation form located on this page.


Michael Heygood, James Craig Orr, Jr. and Eric Pearson are all Board Certified in Personal Injury Trial Law — Texas Board of Legal Specialization.

** Michael Heygood, James Craig Orr, Jr. and Eric Pearson were selected to the Super Lawyers List, a Thomson Reuters publication, for the years 2003 through 2013.

by Jay Pate

John “Jay” Pate is a licensed attorney who focuses his practice on complex tort litigation involving catastrophic personal injury, wrongful death, medical malpractice, and product liability cases.