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Gunned Down By the Supremes

February 21, 2013
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The Supreme Court has issued another patent–related opinion, which causes all patent–related lawyers to prick up their ears…

In Gunn v. Minton, the issue on appeal was whether a patent litigation malpractice case “arises under” the federal patent laws for purposes of exclusive federal jurisdiction. In a unanimous decision, the Supreme Court found that it did not.

The relevant test is an 8–year old opinion in Grable & Sons Metal Products, Inc. v. Darue Engineering & Mfg, which noted that “arising under” jurisdiction may exist when there is an underlying federal issue arising from the well–plead complaint. Grable  held that federal jurisdiction over a state law claim will lie if a federal issue is: (1) necessarily raised; (2) actually disputed; (3) substantial; and (4) capable of resolution in federal court without disrupting the federal–state balance approved by Congress. All nine justices concluded that Minton’s case flunked prongs (3) and (4) of the test.

All well and good, but Section 1338 of the U.S. Code, which provides the “arising under” jurisdiction has recently been amended (by the infamous America Invents Act) such that the new test is whether the case involves “any claim for relief arising under any Act of Congress relating to patents….” As such, the practical impact of Gunn may be short–lived. Nonetheless, it is an important, if gentle reminder by the Supremes that the mere insertion of the word “patent” in a complaint does not necessarily eliminate all possibility of state court jurisdiction.

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