Terrorizing Patent Practitioners: Highlights from Oral Argument at the Supreme Court for Gunn v. Minton

by Bracewell LLP
Contact

On January 16, 2013, the Supreme Court of the United States heard oral arguments in Gunn.1 The heart of the matter is whether the state-based malpractice action may be heard in state court or whether it must be heard in federal court because it "arises under" federal question jurisdiction. Our previous reports have examined the history of the case as it has moved through the Texas courts to the Supreme Court, including Petitioner's and Respondent's briefs and associated amicus curiae briefs.2

This update addresses the topics that the Justices raised during oral argument. The Court visited several subjects of interest, including the balance between federal and state responsibilities and two of the four Grable factors - "substantiality" and the federal interest.3 Two noteworthy areas of discussion include the examination of the federal and state balance as a consideration for determining which court system tries patent malpractice cases and the impact upon patent practitioners. 

Federal versus state courts
Justice Scalia inquired about the binding effect of federal decisions on state-based laws and state decisions on federally-based laws.  Petitioners responded that there is no binding effect of a state court interpreting a legal malpractice claim that includes a patent issue on laws and regulations for patent prosecution before the Patent and Trademark Office or in federal courts for patent litigation. Petitioners also responded that a federal court's decision determining malpractice law would not bind a Texas court's interpretation of Texas malpractice law. Petitioners argued there are no federal issues that need to be resolved in the case; the patent questions are fact issues.4

Respondent argued that the decision of state courts regarding patent law will have an influence on the federal courts and agencies. Issue preclusion will bind the parties in the state court proceedings even if the dispute comes up subsequently in a federal forum.5 Respondent argued that issue preclusion emerges because of the case-within-a-case analysis structure of the malpractice claim. Because the federal issue is determined under a state court's interpretation of what federal laws and practices are, the state courts naturally will develop a body of state-based common law that interprets the federal patent rules and regulations. Federal courts and agencies do not have the authority to review this state common law. This state-based common law ultimately impacts the decision of a federal court or agency because the attorney is collaterally estopped from presenting the issue again in a federal court after the state court has interpreted the federal issue using the state's common law.6 Respondent offered the following as an example of the impact that a state court can have on a federal agency: that the prior state-based findings in this very case were submitted to the PTO as part of Respondent's duty of disclosure for maintaining the prosecution of a continuation patent application related to the patent in the underlying patent infringement case.7

Justice Scalia asked Respondent why it is preferable to hear a state-based malpractice action for an underlying patent infringement case in federal court over a state court, where the malpractice action originates: 

I mean, it seems to me it's Twiddle Dum or Twiddle Dee, whichever court system you go to, you are going to terrorize the lawyers of that State on the basis of an opinion of a court that is not dispositive on those issues.8

Respondent argued that since patent infringement cases are tried in federal court under federal rules, whereas malpractice cases with underlying patent infringement issues are tried in state court under state court rules, the state courts may not adopt the same rules for interpreting the patent-related issues in the malpractice case as a federal court would in a patent case.9 Scalia retorted that Respondent was asking for the same thing in reverse: trying state-based malpractice claims where the federal courts may not adopt the state's malpractice-interpretation rules. Respondent agreed there appeared to be a conundrum but emphasized that it is important for the patent issue in the malpractice case (the experimental use exception) to be decided under federal law because it is not a hypothetical holding but would have "real-world effect".10 Moreover, holding that these cases may be tried in state courts could result in the fifty states potentially deciding some of these federal patent issues differently and seriously undermining the continuity and consistency of an area of law that requires those very qualities if it is to serve its purpose. 

Administering patent law practitioners
The Justices looked into the impact of the decision on patent law practitioners. "Patent attorneys" are licensed attorneys who practice federal patent law but who are also subject to administration by the state courts and a state bar association.11  Respondent argued that a state court determination on federal patent law, such as one made in a malpractice case, can act to form a new state-based common law doctrine that patent attorneys must comply with or potentially face either attorney discipline or a lawsuit. If Petitioners are correct, Respondent argued that not only will patent attorneys have to comply with federal patent law but also with state-based common law developed in state courts that interpret the requirements of federal patent law and regulations.12 Chief Justice Roberts and Justices Kagan and Sotomayor questioned whether it is realistic that a state could find that a patent attorney had committed malpractice in fully complying with the requirements of the federal practice. Respondent answered that a patent attorney potentially could be found to have committed malpractice if the patent attorney did not comply with the state's interpretation of what federal patent law or regulations required.13

During rebuttal argument, both Chief Justice Roberts and Justice Sotomayor continued the inquiry with Petitioners by asking about the possibility of patent lawyers having to fulfill additional or different requirements in complying with both state and federal rules in practicing patent law. Petitioners responded that any extra work done by a patent attorney based upon a state common-law requirement to avoid malpractice ultimately does not undermine the federal requirements and duties for performing the prosecution or handling the litigation. A patent attorney following a state requirement that is contrary to a federal requirement, however, is doing so at their own peril.14

The transcript for the oral argument is available at the Supreme Court's website.15

If your company has questions about, or cases involving, "arising under" jurisdiction, please contact any of the Bracewell & Giuliani attorneys listed for more information regarding this topic.

_________________________

1 Minton v. Gunn, 355 S.W.3d 634 (Tex. 2011), cert. granted (U.S. Oct. 5, 2012) (No. 11-1118).

2 Mike Sellers et al., Gunning for the Supreme Court: A "Substantial" Case "Arising" from Texas That Means More Than You Think! (Oct. 9, 2012), available here; Mike Sellers et al., Opening Shots in Gunn v. Minton: The Petitioner's Brief and Several Amici Curiae Briefs in Support (Dec. 27, 2012), available here; Mike Sellers, et al., Returning Fire: The Respondent's Brief and Several Supporting Amicus Curiae Briefs in Gunn v. Minton (Jan. 10, 2013), available here.

3 Grable & Sons Metal Products, Inc. v. Darue Eng'g & Mfg., 545 U.S. 308, 316 (2005).

4 Oral Argument Transcript at 11-12, Gunn v. Minton (U.S., filed Jan. 16, 2013) (No. 11-1118).

5 Oral Argument Transcript at 28-29.

6 Oral Argument Transcript at 29-32.

7 Oral Argument Transcript at 40-41.

8 Oral Argument Transcript at 35.

9 Oral Argument Transcript at 35-36.

10 Oral Argument Transcript at 35-37.

11 Two of the three authors (Sellers and Samardzija) are registered patent attorneys. 

12 Oral Argument Transcript at 30-32.

13 Oral Argument Transcript at 33-35.

14 Oral Argument Transcript at 49-51. 

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Bracewell LLP | Attorney Advertising

Written by:

Bracewell LLP
Contact
more
less

Bracewell LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!