Gunn v. Minton , 133 S. Ct. 1059 ( 2013 )

(Slip Opinion) OCTOBER TERM, 2012 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U.S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
GUNN ET AL. v. MINTON
CERTIORARI TO THE SUPREME COURT OF TEXAS
No. 11–1118. Argued January 16, 2013—Decided February 20, 2013
Petitioner attorneys represented respondent Minton in a federal patent
infringement suit. The District Court declared Minton’s patent inva-
lid under the “on sale” bar since he had leased his interactive securi-
ties trading system to a securities brokerage “more than one year
prior to the date of the [patent] application.” 35 U.S. C. §102(b). In
a motion for reconsideration, Minton argued for the first time that
the lease was part of ongoing testing, and therefore fell within the
“experimental use” exception to the on-sale bar. The District Court
denied the motion and the Federal Circuit affirmed, concluding that
the District Court had appropriately held that argument waived.
Convinced that his attorneys’ failure to timely raise the argument
cost him the lawsuit and led to the invalidation of his patent, Minton
brought a legal malpractice action in Texas state court. His former
attorneys argued that Minton’s infringement claims would have
failed even if the experimental-use argument had been timely raised,
and the trial court agreed. On appeal, Minton claimed that the fed-
eral district courts had exclusive jurisdiction over claims like his un-
der 28 U.S. C. §1338(a), which provides for exclusive federal jurisdic-
tion over any case “arising under any Act of Congress relating to
patents.” Minton argued that the state trial court had therefore
lacked jurisdiction, and he should be able to start over with his mal-
practice suit in federal court. Applying the test of Grable & Sons
Metal Products, Inc. v. Darue Engineering & Mfg., 545 U.S. 308, the
Texas Court of Appeals rejected Minton’s argument, proceeded to the
merits, and determined that Minton had failed to establish experi-
mental use. The Texas Supreme Court reversed, concluding that the
case properly belonged in federal court because the success of Min-
ton’s malpractice claim relied upon a question of federal patent law.
Held: Section §1338(a) does not deprive the state courts of subject mat-
2 GUNN v. MINTON
Syllabus
ter jurisdiction over Minton’s malpractice claim. Pp. 4–13.
(a) Congress has authorized the federal district courts to exercise
original jurisdiction over “any civil action arising under any Act of
Congress relating to patents,” and further decreed that “[n]o State
court shall have jurisdiction over any [such] claim.” §1338(a). Be-
cause federal law did not create the cause of action asserted by Min-
ton’s legal malpractice claim, the claim can “aris[e] under” federal pa-
tent law only if it “necessarily raise[s] a stated federal issue, actually
disputed and substantial, which a federal forum may entertain with-
out disturbing any congressionally approved balance of federal and
state judicial responsibilities.” Grable, 545 U. S., at 314. Pp. 4–6.
(b) Applying Grable’s inquiry here, it is clear that Minton’s legal
malpractice claim does not arise under federal patent law. Pp. 6–12.
(1) Resolution of a federal patent question is “necessary” to Min-
ton’s case. To prevail on his claim, Minton must show that an exper-
imental-use argument would have prevailed if only petitioners had
timely made it in the earlier patent litigation. That hypothetical pa-
tent case within the malpractice case must be resolved to decide Min-
ton’s malpractice claim. P. 7.
(2) The federal issue is also “actually disputed.” Minton argues
that the experimental-use exception applied, which would have saved
his patent from the on-sale bar; petitioners argue that it did not.
Pp. 7–8.
(3) Minton’s argument founders, however, on Grable’s substanti-
ality requirement. The substantiality inquiry looks 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 develop-
ment of a uniform body of [patent] law.” Bonito Boats, Inc. v. Thun-
der Craft Boats, Inc., 489 U.S. 141, 162. The federal courts have ex-
clusive jurisdiction over actual patent cases, and in resolving the
nonhypothetical patent questions those cases present they are of
course not bound by state precedents. Minton suggests that state
courts’ answers to hypothetical patent questions can sometimes have
real-world effect on other patents through issue preclusion, but even
assuming that is true, such “fact-bound and situation-specific” effects
are not sufficient to establish arising under jurisdiction, Empire
HealthChoice Assurance, Inc. v. McVeigh, 547 U.S. 677, 701. Finally,
the federal courts’ greater familiarity with patent law is not enough,
by itself, to trigger the federal courts’ exclusive patent jurisdiction.
Pp. 8–12.
(4) It follows from the foregoing that Minton does not meet Gra-
Cite as: 568 U. S. ____ (2013) 3
Syllabus
ble’s fourth requirement, which is concerned with the appropriate
federal-state balance. There is no reason to suppose that Congress
meant to bar from state courts state legal malpractice claims simply
because they require resolution of a hypothetical patent issue. P. 12.
355 S.W.3d 634, reversed and remanded.
ROBERTS, C. J., delivered the opinion for a unanimous Court.
Cite as: 568 U. S. ____ (2013) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Wash-
ington, D. C. 20543, of any typographical or other formal errors, in order
that corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
_________________
No. 11–1118
_________________
JERRY W. GUNN, ET AL., PETITIONERS v.
VERNON F. MINTON
ON WRIT OF CERTIORARI TO THE SUPREME COURT OF TEXAS
[February 20, 2013]
CHIEF JUSTICE ROBERTS delivered the opinion of the
Court.
Federal courts have exclusive jurisdiction over cases
“arising under any Act of Congress relating to patents.”
28 U.S. C. §1338(a). The question presented is whether a
state law claim alleging legal malpractice in the handling
of a patent case must be brought in federal court.
I
In the early 1990s, respondent Vernon Minton devel-
oped a computer program and telecommunications net-
work designed to facilitate securities trading. In March
1995, he leased the system—known as the Texas Comput-
er Exchange Network, or TEXCEN—to R. M. Stark & Co.,
a securities brokerage. A little over a year later, he ap-
plied for a patent for an interactive securities trading
system that was based substantially on TEXCEN. The
U. S. Patent and Trademark Office issued the patent in
January 2000.
Patent in hand, Minton filed a patent infringement suit
in Federal District Court against the National Association
of Securities Dealers, Inc. (NASD) and the NASDAQ Stock
Market, Inc. He was represented by Jerry Gunn and the
2 GUNN v. MINTON
Opinion of the Court
other petitioners. NASD and NASDAQ moved for sum-
mary judgment on the ground that Minton’s patent was
invalid under the “on sale” bar, 35 U.S. C. §102(b). That
provision specifies that an inventor is not entitled to a
patent if “the invention was . . . on sale in [the United
States], more than one year prior to the date of the appli-
cation,” and Minton had leased TEXCEN to Stark more
than one year prior to filing his patent application. Reject-
ing Minton’s argument that there were differences be-
tween TEXCEN and the patented system that precluded
application of the on-sale bar, the District Court granted
the summary judgment motion and declared Minton’s
patent invalid. Minton v. National Assn. of Securities
Dealers, Inc., 226 F. Supp. 2d 845, 873, 883–884 (ED Tex.
2002).
Minton then filed a motion for reconsideration in the
District Court, arguing for the first time that the lease
agreement with Stark was part of ongoing testing of
TEXCEN and therefore fell within the “experimental use”
exception to the on-sale bar. See generally Pfaff v. Wells
Electronics, Inc., 525 U.S. 55, 64 (1998) (describing the
exception). The District Court denied the motion. Minton
v. National Assn. of Securities Dealers, Inc., No. 9:00–cv–
00019 (ED Tex., July 15, 2002).
Minton appealed to the U. S. Court of Appeals for the
Federal Circuit. That court affirmed, concluding that the
District Court had appropriately held Minton’s experi-
mental-use argument waived. See Minton v. National
Assn. of Securities Dealers, Inc., 336 F.3d 1373, 1379–
1380 (CA Fed. 2003).
Minton, convinced that his attorneys’ failure to raise the
experimental-use argument earlier had cost him the law-
suit and led to invalidation of his patent, brought this
malpractice action in Texas state court. His former law-
yers defended on the ground that the lease to Stark was
not, in fact, for an experimental use, and that therefore
Cite as: 568 U. S. ____ (2013) 3
Opinion of the Court
Minton’s patent infringement claims would have failed
even if the experimental-use argument had been timely
raised. The trial court agreed, holding that Minton had
put forward “less than a scintilla of proof ” that the lease
had been for an experimental purpose. App. 213. It ac-
cordingly granted summary judgment to Gunn and the
other lawyer defendants.
On appeal, Minton raised a new argument: Because his
legal malpractice claim was based on an alleged error in a
patent case, it “aris[es] under” federal patent law for
purposes of 28 U.S. C. §1338(a). And because, under
§1338(a), “[n]o State court shall have jurisdiction over any
claim for relief arising under any Act of Congress relating
to patents,” the Texas court—where Minton had originally
brought his malpractice claim—lacked subject matter
jurisdiction to decide the case. Accordingly, Minton ar-
gued, the trial court’s order should be vacated and the case
dismissed, leaving Minton free to start over in the Federal
District Court.
A divided panel of the Court of Appeals of Texas rejected
Minton’s argument. Applying the test we articulated in
Grable & Sons Metal Products, Inc. v. Darue Engineering
& Mfg., 545 U.S. 308, 314 (2005), it held that the federal
interests implicated by Minton’s state law claim were not
sufficiently substantial to trigger §1338 “arising under”
jurisdiction. It also held that finding exclusive federal
jurisdiction over state legal malpractice actions would,
contrary to Grable’s commands, disturb the balance of
federal and state judicial responsibilities. Proceeding to
the merits of Minton’s malpractice claim, the Court of
Appeals affirmed the trial court’s determination that
Minton had failed to establish experimental use and that
arguments on that ground therefore would not have saved
his infringement suit.
The Supreme Court of Texas reversed, relying heavily
on a pair of cases from the U. S. Court of Appeals for the
4 GUNN v. MINTON
Opinion of the Court
Federal Circuit. 355 S.W.3d 634, 641–642 (2011) (dis-
cussing Air Measurement Technologies, Inc. v. Akin Gump
Strauss Hauer & Feld, L. L. P., 504 F.3d 1262 (2007);
Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d
1281 (2007)). The Court concluded that Minton’s claim
involved “a substantial federal issue” within the meaning
of Grable “because the success of Minton’s malpractice
claim is reliant upon the viability of the experimental use
exception as a defense to the on-sale bar.” 355 S.W. 3d, at
644. Adjudication of Minton’s claim in federal court was
consistent with the appropriate balance between federal
and state judicial responsibilities, it held, because “the
federal government and patent litigants have an interest
in the uniform application of patent law by courts well-
versed in that subject matter.” Id., at 646 (citing Im-
munocept, supra, at 1285–1286; Air Measurement Tech-
nologies, supra, at 1272).
Justice Guzman, joined by Justices Medina and Willett,
dissented. The dissenting justices would have held that
the federal issue was neither substantial nor disputed,
and that maintaining the proper balance of responsibility
between state and federal courts precluded relegating
state legal malpractice claims to federal court.
We granted certiorari. 568 U. S. ___ (2012).
II
“Federal courts are courts of limited jurisdiction,” pos-
sessing “only that power authorized by Constitution and
statute.” Kokkonen v. Guardian Life Ins. Co. of America,
511 U.S. 375, 377 (1994). There is no dispute that the
Constitution permits Congress to extend federal court
jurisdiction to a case such as this one, see Osborn v. Bank
of United States, 9 Wheat. 738, 823–824 (1824); the ques-
tion is whether Congress has done so, see Powell v.
McCormack, 395 U.S. 486, 515–516 (1969).
As relevant here, Congress has authorized the federal
Cite as: 568 U. S. ____ (2013) 5
Opinion of the Court
district courts to exercise original jurisdiction in “all civil
actions arising under the Constitution, laws, or treaties of
the United States,” 28 U.S. C. §1331, and, more particu-
larly, over “any civil action arising under any Act of Con-
gress relating to patents,” §1338(a). Adhering to the
demands of “[l]inguistic consistency,” we have interpreted
the phrase “arising under” in both sections identically,
applying our §1331 and §1338(a) precedents interchange-
ably. See Christianson v. Colt Industries Operating Corp.,
486 U.S. 800, 808–809 (1988). For cases falling within
the patent-specific arising under jurisdiction of §1338(a),
however, Congress has not only provided for federal juris-
diction but also eliminated state jurisdiction, decreeing
that “[n]o State court shall have jurisdiction over any
claim for relief arising under any Act of Congress relating
to patents.” §1338(a) (2006 ed., Supp. V). To determine
whether jurisdiction was proper in the Texas courts, there-
fore, we must determine whether it would have been
proper in a federal district court—whether, that is, the
case “aris[es] under any Act of Congress relating to pa-
tents.”
For statutory purposes, a case can “aris[e] under” feder-
al law in two ways. Most directly, a case arises under
federal law when federal law creates the cause of action
asserted. See American Well Works Co. v. Layne & Bowler
Co., 241 U.S. 257, 260 (1916) (“A suit arises under the law
that creates the cause of action”). As a rule of inclusion,
this “creation” test admits of only extremely rare excep-
tions, see, e.g., Shoshone Mining Co. v. Rutter, 177 U.S.
505 (1900), and accounts for the vast bulk of suits that
arise under federal law, see Franchise Tax Bd. of Cal. v.
Construction Laborers Vacation Trust for Southern Cal.,
463 U.S. 1, 9 (1983). Minton’s original patent infringe-
ment suit against NASD and NASDAQ, for example, arose
under federal law in this manner because it was author-
ized by 35 U.S. C. §§271, 281.
6 GUNN v. MINTON
Opinion of the Court
But even where a claim finds its origins in state rather
than federal law—as Minton’s legal malpractice claim
indisputably does—we have identified a “special and small
category” of cases in which arising under jurisdiction still
lies. Empire HealthChoice Assurance, Inc. v. McVeigh, 547
U.S. 677, 699 (2006). In outlining the contours of this
slim category, we do not paint on a blank canvas. Unfor-
tunately, the canvas looks like one that Jackson Pollock
got to first. See 13D C. Wright, A. Miller, E. Cooper, & R.
Freer, Federal Practice and Procedure §3562, pp. 175–176
(3d ed. 2008) (reviewing general confusion on question).
In an effort to bring some order to this unruly doctrine
several Terms ago, we condensed our prior cases into the
following inquiry: Does the “state-law claim necessarily
raise a stated federal issue, actually disputed and sub-
stantial, which a federal forum may entertain without
disturbing any congressionally approved balance of federal
and state judicial responsibilities”? Grable, 545 U. S., at
314. That is, federal jurisdiction over a state law claim
will lie if a federal issue is: (1) necessarily raised, (2) actu-
ally disputed, (3) substantial, and (4) capable of resolution
in federal court without disrupting the federal-state bal-
ance approved by Congress. Where all four of these re-
quirements are met, we held, jurisdiction is proper be-
cause there is a “serious federal interest in claiming the
advantages thought to be inherent in a federal forum,”
which can be vindicated without disrupting Congress’s
intended division of labor between state and federal
courts. Id., at 313–314.
III
Applying Grable’s inquiry here, it is clear that Minton’s
legal malpractice claim does not arise under federal patent
law. Indeed, for the reasons we discuss, we are comforta-
ble concluding that state legal malpractice claims based on
underlying patent matters will rarely, if ever, arise under
Cite as: 568 U. S. ____ (2013) 7
Opinion of the Court
federal patent law for purposes of §1338(a). Although
such cases may necessarily raise disputed questions of
patent law, those cases are by their nature unlikely to
have the sort of significance for the federal system neces-
sary to establish jurisdiction.
A
To begin, we acknowledge that resolution of a federal
patent question is “necessary” to Minton’s case. Under
Texas law, a plaintiff alleging legal malpractice must
establish four elements: (1) that the defendant attorney
owed the plaintiff a duty; (2) that the attorney breached
that duty; (3) that the breach was the proximate cause of
the plaintiff ’s injury; and (4) that damages occurred. See
Alexander v. Turtur & Associates, Inc., 146 S.W.3d 113,
117 (Tex. 2004). In cases like this one, in which the attor-
ney’s alleged error came in failing to make a particular
argument, the causation element requires a “case within a
case” analysis of whether, had the argument been made,
the outcome of the earlier litigation would have been
different. 355 S.W. 3d, at 639; see 4 R. Mallen & J.
Smith, Legal Malpractice §37:15, pp. 1509–1520 (2012).
To prevail on his legal malpractice claim, therefore, Min-
ton must show that he would have prevailed in his federal
patent infringement case if only petitioners had timely
made an experimental-use argument on his behalf. 355
S.W. 3d, at 644. That will necessarily require application
of patent law to the facts of Minton’s case.
B
The federal issue is also “actually disputed” here—
indeed, on the merits, it is the central point of dispute.
Minton argues that the experimental-use exception
properly applied to his lease to Stark, saving his patent
from the on-sale bar; petitioners argue that it did not.
This is just the sort of “ ‘dispute . . . respecting the . . .
8 GUNN v. MINTON
Opinion of the Court
effect of [federal] law’ ” that Grable envisioned. 545 U. S.,
at 313 (quoting Shulthis v. McDougal, 225 U.S. 561, 569
(1912)).
C
Minton’s argument founders on Grable’s next require-
ment, however, for the 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. 355 S.W. 3d, at 644 (“because the suc-
cess of Minton’s malpractice claim is reliant upon the
viability of the experimental use exception as a defense to
the on-sale bar, we hold that it is a substantial federal
issue”); see also Air Measurement Technologies, 504 F. 3d,
at 1272 (“the issue is substantial, for it is a necessary
element of the malpractice case”). As our past cases show,
however, it is not enough that the federal issue be signifi-
cant 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 sys-
tem as a whole.
In Grable itself, for example, the Internal Revenue
Service had seized property from the plaintiff and sold it
to satisfy the plaintiff ’s federal tax delinquency. 545
U. S., at 310–311. Five years later, the plaintiff filed a
state law quiet title action against the third party that
had purchased the property, alleging that the IRS had
failed to comply with certain federally imposed notice
requirements, so that the seizure and sale were invalid.
Ibid. In holding that the case arose under federal law, we
primarily focused not on the interests of the litigants
themselves, but rather on the broader significance of the
notice question for the Federal Government. We empha-
Cite as: 568 U. S. ____ (2013) 9
Opinion of the Court
sized the Government’s “strong interest” in being able to
recover delinquent taxes through seizure and sale of prop-
erty, which in turn “require[d] clear terms of notice to
allow buyers . . . to satisfy themselves that the Service has
touched the bases necessary for good title.” Id., at 315.
The Government’s “direct interest in the availability of a
federal forum to vindicate its own administrative action”
made the question “an important issue of federal law that
sensibly belong[ed] in a federal court.” Ibid.
A second illustration of the sort of substantiality we
require comes from Smith v. Kansas City Title & Trust
Co., 255 U.S. 180 (1921), which Grable described as “[t]he
classic example” of a state claim arising under federal law.
545 U. S., at 312. In Smith, the plaintiff argued that the
defendant bank could not purchase certain bonds issued
by the Federal Government because the Government had
acted unconstitutionally in issuing them. 255 U. S., at
198. We held that the case arose under federal law, be-
cause the “decision depends upon the determination” of
“the constitutional validity of an act of Congress which is
directly drawn in question.” Id., at 201. Again, the rele-
vant point was not the importance of the question to the
parties alone but rather the importance more generally of
a determination that the Government “securities were
issued under an unconstitutional law, and hence of no
validity.” Ibid.; see also Merrell Dow Pharmaceuticals Inc.
v. Thompson, 478 U.S. 804, 814, n. 12 (1986).
Here, the federal issue carries no such significance.
Because of the backward-looking nature of a legal mal-
practice claim, the question is posed in a merely hypothet-
ical sense: If Minton’s lawyers had raised a timely experi-
mental-use argument, would the result in the patent
infringement proceeding have been different? No matter
how the state courts resolve that hypothetical “case within
a case,” it will not change the real-world result of the prior
federal patent litigation. Minton’s patent will remain
10 GUNN v. MINTON
Opinion of the Court
invalid.
Nor will allowing state courts to resolve these cases
undermine “the development of a uniform body of [patent]
law.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489
U.S. 141, 162 (1989). Congress ensured such uniformity
by vesting exclusive jurisdiction over actual patent cases
in the federal district courts and exclusive appellate juris-
diction in the Federal Circuit. See 28 U.S. C. §§1338(a),
1295(a)(1). In resolving the nonhypothetical patent ques-
tions those cases present, the federal courts are of course
not bound by state court case-within-a-case patent rulings.
See Tafflin v. Levitt, 493 U.S. 455, 465 (1990). In any
event, the state court case-within-a-case inquiry asks
what would have happened in the prior federal proceeding
if a particular argument had been made. In answering
that question, state courts can be expected to hew closely
to the pertinent federal precedents. It is those precedents,
after all, that would have applied had the argument been
made. Cf. ibid. (“State courts adjudicating civil RICO
claims will . . . be guided by federal court interpretations
of the relevant federal criminal statutes, just as federal
courts sitting in diversity are guided by state court inter-
pretations of state law”).
As for more novel questions of patent law that may arise
for the first time in a state court “case within a case,” they
will at some point be decided by a federal court in the
context of an actual patent case, with review in the Feder-
al Circuit. If the question arises frequently, it will soon be
resolved within the federal system, laying to rest any
contrary state court precedent; if it does not arise fre-
quently, it is unlikely to implicate substantial federal
interests. The present case is “poles apart from Grable,”
in which a state court’s resolution of the federal question
“would be controlling in numerous other cases.” Empire
HealthChoice Assurance, Inc., 547 U. S., at 700.
Minton also suggests that state courts’ answers to hypo-
Cite as: 568 U. S. ____ (2013) 11
Opinion of the Court
thetical patent questions can sometimes have real-world
effect on other patents through issue preclusion. Brief for
Respondent 33–36. Minton, for example, has filed what is
known as a “continuation patent” application related to
his original patent. See 35 U.S. C. §120; 4A D. Chisum,
Patents §13.03 (2005) (describing continuation applica-
tions). He argues that, in evaluating this separate appli-
cation, the patent examiner could be bound by the Texas
trial court’s interpretation of the scope of Minton’s original
patent. See Brief for Respondent 35–36. It is unclear
whether this is true. The Patent and Trademark Office’s
Manual of Patent Examining Procedure provides that res
judicata is a proper ground for rejecting a patent “only
when the earlier decision was a decision of the Board of
Appeals” or certain federal reviewing courts, giving no
indication that state court decisions would have preclusive
effect. See Dept. of Commerce, Patent and Trademark
Office, Manual of Patent Examining Procedure
§706.03(w), p. 700–79 (rev. 8th ed. 2012); 35 U.S. C.
§§134(a), 141, 145; Reply Brief 9–10. In fact, Minton has
not identified any case finding such preclusive effect based
on a state court decision. But even assuming that a state
court’s case-within-a-case adjudication may be preclusive
under some circumstances, the result would be limited to
the parties and patents that had been before the state
court. Such “fact-bound and situation-specific” effects are
not sufficient to establish federal arising under jurisdic-
tion. Empire HealthChoice Assurance, Inc., supra, at 701.
Nor can we accept the suggestion that the federal courts’
greater familiarity with patent law means that legal
malpractice cases like this one belong in federal court. See
Air Measurement Technologies, 504 F. 3d, at 1272 (“The
litigants will also benefit from federal judges who have
experience in claim construction and infringement mat-
ters”); 355 S.W. 3d, at 646 (“patent litigants have an
interest in the uniform application of patent law by courts
12 GUNN v. MINTON
Opinion of the Court
well-versed in that subject matter”). It is true that a
similar interest was among those we considered in Grable.
545 U. S., at 314. But the possibility that a state court
will incorrectly resolve a state claim is not, by itself,
enough to trigger the federal courts’ exclusive patent
jurisdiction, even if the potential error finds its root in a
misunderstanding of patent law.
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. But
something more, demonstrating that the question is signif-
icant to the federal system as a whole, is needed. That is
missing here.
D
It follows from the foregoing that Grable’s fourth re-
quirement is also not met. That requirement is concerned
with the appropriate “balance of federal and state judicial
responsibilities.” Ibid. We have already explained the
absence of a substantial federal issue within the meaning
of Grable. The States, on the other hand, have “a special
responsibility for maintaining standards among members
of the licensed professions.” Ohralik v. Ohio State Bar
Assn., 436 U.S. 447, 460 (1978). Their “interest . . . in
regulating lawyers is especially great since lawyers are
essential to the primary governmental function of admin-
istering justice, and have historically been officers of the
courts.” Goldfarb v. Virginia State Bar, 421 U.S. 773, 792
(1975) (internal quotation marks omitted). We have no
reason to suppose that Congress—in establishing exclu-
sive federal jurisdiction over patent cases—meant to bar
from state courts state legal malpractice claims simply
because they require resolution of a hypothetical patent
issue.
Cite as: 568 U. S. ____ (2013)
13
Opinion of the Court
* * *
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
(1912). In this case, although the state courts must an-
swer 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, there is no “serious federal
interest in claiming the advantages thought to be inherent
in a federal forum,” Grable, supra, at 313. Section 1338(a)
does not deprive the state courts of subject matter juris-
diction.
The judgment of the Supreme Court of Texas is re-
versed, and the case is remanded for further proceedings
not inconsistent with this opinion.
It is so ordered.