Federal question involving patents not necessarily enough to divest state court of jurisdiction
In a recent opinion regarding jurisdiction, federal question, and patent law, the Supreme Court hold that the presence of a substantive issue of patent law in a state action does not necessarily divest state court of jurisdiction in favor of federal court. The opinion, reflecting a 9-0 decision in Gunn v. Minton, applied the “arising under” analysis of Grable & Sons Metal Products, Inc. v. Darue Engineering & Mfg. (U.S. 2005) in deciding whether a malpractice claim, involving an attorney’s failure to raise the “experimental use” exception during court proceedings that ultimately rendered his client’s patent invalid under Section 102(b) “on-sale” bar, belonged in state or federal court. Under Grable, for federal jurisdiction to exist in what would normally be a state action (i.e. malpractice), a claim made in the complaint must necessarily raise a stated federal issue actually disputed and substantial which a federal forum may entertain without disturbing any congressionally approved balance of federal and state judicial responsibilities. The Supreme Court found that the “experimental use” issue was a federal question and was actually disputed, but that Minton failed to raise a substantial federal issue. Therefore, the action belongs in state court.
The Supreme Court tailored its substantiality analysis not on the claim’s significance to the present suit, but rather its impact on the final element, the effect it would have on the federal system as a whole. The Court acknowledged the federal need for a uniform system of patent law, and ruled that however a state court interprets a federal patent question within the context of a state action, it would be non-precedential to federal patent law and even other state law cases. It concludes, “[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. In this case, although the state courts must answer 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. Section 1338(a) does not deprive the state courts of subject matter jurisdiction,” (citations omitted).
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