Opinion recap: Justices decline to make a federal case out of patent malpractice claims.
on Feb 22, 2013 at 11:35 am
Perhaps this is the year when the Justices start showing their hand more clearly in arguments. Wednesday’s decision in Gunn v. Minton certainly provides support for that view. The case presents a question redolent of a law-school federal courts exam. Claims for legal malpractice present a tort claim created by state law. But if the alleged malpractice occurred in a patent case, then the trial court often (and inevitably in some cases) will have to resolve issues of federal patent law. When, if ever, does that embedded federal question make the entire case “arise under” federal law so that it can be brought in federal court in the first instance?
The case reached the Supreme Court because the Federal Circuit has held that the possibility that those cases will involve questions of patent law justifies bringing them all into federal court – which is to say giving the Federal Circuit appellate supervision over all such cases. A divided Texas Supreme Court, with the majority deferring to the Federal Circuit’s view of that problem, held that Texas courts accordingly were closed to patent malpractice claims. The Justices showed great abiding skepticism about that ruling at the argument. And now, little more than a month later, we see a nine-zero reversal authored by the Chief Justice, the first decision from the January argument calendar.
The most interesting thing about the opinion is the parallel between the few points the Court chose to make and the points Gunn’s counsel (Jane Webre) emphasized at argument. The hardest thing about cases in this area is the rank indeterminism of the doctrinal framework, which (for better or worse) turns for the most part on whether the federal interest in the embedded federal question is “substantial.” Webre focused her brief and oral argument on the relatively crisp idea that the patent questions here can’t be “substantial” for jurisdictional purposes because they are hypothetical: they arise indirectly, in malpractice cases, and thus don’t directly affect the validity or interpretation of the patent itself. The Chief Justice’s opinion emphasized that point heavily, noting that in this case the patent was declared invalid in federal litigation, and explaining that no decision in the malpractice litigation, however it might turn out, could resuscitate the patent.
Probably just as important to some of the Justices was a second point Webre emphasized: the tradition of state regulation of attorney competence. The Federal Circuit’s ruling took all patent malpractice claims out of the hands of the state supreme courts that traditionally have been the final authority on setting standards for attorney qualifications and misconduct. The Court’s opinion, buying into that concern, emphasized that the strength of that traditional state interest weighed heavily against finding a substantial federal interest in federal adjudication.
Purists will be disappointed that the Court did not abandon entirely the idea that a “substantial” federal interest makes a cause of action created under state law “arise under” federal law. Accepting its prior precedent, the Court’s opinion specifically approved of its prior decisions in Grable & Sons Metal Products v. Darue Engineering and in Smith v. Kansas City Title & Trust.
Those who look for subtle humor in the Justices’ opinions will, perhaps, be amused by the Court’s response to Minton’s argument that state-court adjudication of malpractice claims will lead to non-uniform rules for patents. Minton had emphasized the likelihood that the Texas courts would ignore federal-court rulings on patent issues. The Court commented in response that “state courts can be expected to hew closely to the pertinent federal precedents.” In this case, of course, the Texas Supreme Court was brusquely reversed for just such a close hewing to the pertinent Federal Circuit precedents!
This case will go down in the stats as a reversal for the Texas Supreme Court. But the reality of course is that this case is just another in the line of cases reining in what the Justices so often have viewed as the Federal Circuit’s excessive penchant for a self-aggrandizing centralization of patent law.