Federal Circuit Review - Volume 3 | Issue 3 March 2013

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In This Issue:

• State Courts Should Handle Patent Malpractice Cases

• “A” and “An” in Claims Mean “One or More”

• No Direct Infringer Needs to be Identified in Declaratory Judgment Jurisdiction Over Indirect Infringement

- Excerpt from State Courts Should Handle Patent Malpractice Cases:

In Gunn v. Minton (S. CT.) (J., ROBERTS)., the Supreme Court reversed the Texas Supreme Court’s decision that a patent malpractice claim was within the exclusive jurisdiction of the federal courts.

A patentee brought a state-law malpractice claim in Texas state court alleging that his attorneys had committed malpractice in prior patent litigation by failing to raise the experimental use defense to the on-sale bar, resulting in his patent being invalidated. The trial court granted summary judgment against the patentee on his malpractice claim, citing a lack of proof. The Texas Court of Appeals affirmed. The Texas Supreme Court, however, dismissed the entire action for lack of jurisdiction, holding that the state-law claim was within the exclusive jurisdiction of the federal courts because it raised an issue of patent law: whether an “experimental use” argument would have been successful if raised during the prior patent litigation. In dismissing the case, the Texas Supreme Court followed Federal Circuit precedent holding that statelaw claims are within the exclusive jurisdiction of the federal courts if they require the resolution of patent-law issues.

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