Yesterday, a unanimous Supreme Court has overturned the Federal Circuit practice of keeping malpractice cases against patent attorneys in Federal court with appeals to the Federal Circuit. Gunn v. Minton.
In this case, the Texas Supreme Court had followed the Federal Circuit’s rule and dismissed the case for lack of subject matter jurisdiction. The Federal Circuit’s rule was that such cases required resolution of significant issues of patent law, including whether the complainant would have prevailed if not for the alleged malpractice. Would the complainant have received its patent in prosecution or prevailed on infringement claims in litigation? The Federal Circuit was concerned that state courts are not adequately experienced in deciding patent cases which have exclusive Federal jurisdiction. There could also be cases with conflicting results.
Judge O’Malley had recently been dissenting from the court’s prevailing view on this issue.
The Supreme Court held that although the state courts must answer questions of patent law to resolve the malpractice claims, the answer has no broader effects. It is not binding precedent on future patent claims and will not effect the validity of the patent. Therefore, state courts may retain jurisdiction over such malpractice claims.
The question next becomes whether the resolution of this case will effect other cases. For example, is a dispute over a license or other contract whose subject matter is a patent belong exclusively in Federal court? Contract disputes are typically decided under state law. This question is presented in another case where a petition is pending before the Supreme Court. Regents of Univ. of California v. Caldera Pharm., Inc.
As noted by Patently-O, however, the AIA changed the jurisdictional requirement from whether the dispute “arises under” the patent laws to whether it involves “any claim for relief arising under any Act of Congress relating to patents.”