Gunn V. Minton Case Summary

Case:
Gunn v. Minton, 133 S. Ct. 1059 – Supreme Court (2013)
This is a federal court case that takes place in the Supreme Court of the United States. It is a civil case, brought to the Texas State Court, appealed by the plaintiff from the trial court decision. This case was argued on January 16, 2013 and resolved on January 20, 2013.
Issue:
Does the Federal Court have jurisdiction of an attorney malpractice lawsuit (alleging the attorney did not represent plaintiff correctly) when the original case pertains to a patent infringement in which patent law has federal jurisdiction?
Facts of Case:
In the 1990’s, Vernon Minton developed a computer software program called Texas Computer Exchange Network, or TEXCEN, that allowed for financial traders

to perform their trades independently online. He then leased a version of TEXCEN to a securities brokerage. A year later, Minton filed for a patent that was granted on January 11, 2000.
After Minton acquired the patent, he proceeded to sue the Nation Association of Securities Dealers (NASD) and the National Association of Securities Dealers Automated Quotations (NASDAQ) in Federal District Court for patent infringement.

Procedure:
Gunn v. Minton is a legal malpractice case. The original case was based on a patent infringement. The patent infringement case was heard in Federal District Court where a summary judgment against Minton was ordered due to the violation of the “on sale bar” provision of pre-AIA 35 U.S.C. § 102(b).
Later the case was appealed to the US Court of Appeals where the Federal District Court decision was affirmed.
The legal malpractice case was first heard in the Texas State Court where Minton lost the suit. It was later appealed to the Texas State Court of Appeals; where the question of federal jurisdiction over the malpractice suit arose due to the patent issue. Minton lost the appeal.
Then the Supreme Court of Texas reversed the Texas State Court of Appeals decision, stating that Minton’s malpractice claim involved a substantial federal issue.
The United States Supreme Court accepted the case in

2012.

Decision of the Case:

In a 9 – 0 judgment, the US Supreme Court reversed the Supreme Court of Texas’ decision.

When the Supreme Court of Texas reversed the Texas Court of Appeals decision in Minton’s malpractice claim, they decided the case belonged in Federal Court because it had a substantial federal issue. The Supreme Court ruled that the state’s responsibility of overseeing professional standards (i.e. legal malpractice) was more significant in this case than the federal patent law.

Rationale of the Court:
In 2003, Minton, displeased with the verdict from the District Court regarding the patent infringement, sues his attorneys, including head attorney Jerry W. Gunn et al, in the Texas State Court for committing legal malpractice for failing to raise the experimental use defense in a timely manner. Gunn then filed for summary judgment arguing no evidence due to the attorney’s lack of knowledge of the earlier sale being used for experimental purposes to be applicable. The Texas State Court settled the summary judgment to be in favor of Gunn.
In 2011, Minton appeals to the Texas State Court of Appeals. Minton argued his legal malpractice suit was based on patent law and that the state court did not use “subject matter jurisdiction.” Furthermore, Minton asked the Texas State Court of Appeals to dismiss the patent infringement case in order to sue for the second time.
The Texas State Court of Appeals rejected Minton’s

arguments.
In 2012, the Supreme Court of Texas reversed the Texas State Court of Appeals decision, stating that Minton’s malpractice claim involved a “substantial federal issue.”
The Supreme Court used a four-part test to decide if a state law case should have federal jurisdiction. This four-part test came from the Grable and Sons Medal Products v. Darue Engineering and Manufacturing case. Federal Courts should have jurisdiction over a state law claim if a federal issue is:
1. Necessarily raised,
2. Actually disputed,
3. Substantial ,
4. Capable of resolution in federal court without disrupting the federal/state balance as approved by congress.

Is the federal patent law necessary to bring up in order for Minton to prove malpractice? The Supreme Court decided that to prove malpractice, the federal patent law would have to be raised in Minton’s case.

In the second test, is the experimental use exception actually disputed? The Supreme Court decided that the experimental use exception, which is federal patent law, is the central point of dispute in the malpractice case.

In the third test, is the answer to the experimental use exception in the patent law substantial to the overall federal patent system? The Supreme Court decided that the answer to the federal issue of patent law is insignificant to the federal system as a whole in this case.

Finally, in the fourth test, does the federal and state judicial responsibility stay balanced? The Supreme Court decided that the states have “a special responsibility for maintaining standards among members of the licensed professions.” In other words, the state’s responsibility to regulate lawyers is greater than the federal jurisdiction over patent cases.

The Supreme Court then decided that Minton’s legal malpractice claim does not come under federal patent law jurisdiction. Even though patent law may be discussed in this malpractice suit, it won’t be a significant issue.

My Opinion:
I agree with the Supreme Court decision that Minton’s legal malpractice claim was insufficient to be handled in federal courts. Minton should have discussed with Gunn to a higher level the implications of originally leasing his software for experimental purpose in the Federal District Court. I believe that Gunn et al did not partake in legal malpractice.
Over the years, Minton realized the amount of money he had lost in the court system due to the loss of the primary patent infringement case. Minton continued appealing, costing him additional money and overused the legal system. I believe Minton’s reason for the number of appeals was in hopes he could win and compensate the costs lost in the original case.