Monthly Archives: February 2013

CLIENT ALERT: Supreme Court Decision on Jurisdiction for a Patent Malpractice Claim

In Gunn v. Minton, No. 11-1118, slip op. (U.S. February 20, 2013), the United States Supreme Court held that the state court has jurisdiction for a patent malpractice claim because the claim did not meet the “arising under” factors to provide exclusive federal jurisdiction.

Background of the Case
Minton was the plaintiff in a patent infringement case in which the defense asserted that Minton’s patent was invalid due to an on-sale bar that occurred when he leased the technology. Minton’s counsel did not argue the experimental-use exception and Minton’s patent was held invalid. Minton filed a motion for reconsideration that went to the Federal Circuit who held that the experimental-use argument had been waived.

Minton’s sued his attorneys, Gunn et al., for malpractice in Texas state court. The trial court held that Minton’s experimental-use argument would have failed if it was timely raised because he put on “less than a scintilla of proof.” Id. at 3. Minton appealed, arguing that his malpractice claim arose under federal patent law and should be heard in federal court instead of state court. The Court of Appeals held that Minton’s malpractice claim did not arise under federal patent law but the Supreme Court of Texas reversed that decision. Gunn et al. filed a petition for certiorari to the United States Supreme Court that was subsequently granted.

Supreme Court Holding
The Supreme Court reversed and remanded the decision of the Texas Supreme Court in a 9-0 decision. There is federal jurisdiction over a state law claim if the federal issue is 1) necessarily raised, 2) actually disputed, 3) substantial, and 4) capable of resolution in federal court without disrupting the federal-state balance approved by Congress. The Court held that although a federal issue was necessarily raised and actually disputed, the federal issue was not substantial and the federal issue was not capable of resolution in federal court without disrupting the federal-state balance.

For the federal issue to be substantial, it must be important to the federal system as a whole, not just the parties. Legal malpractice in Texas requires four elements, 1) that the defendant attorney owed the plaintiff a duty; 2) that the attorney breached that duty; 3) that the breach was the proximate cause of the plaintiff’s injury; and 4) that damages occurred. The causation element of the malpractice claim requires a “case within a case analysis” of whether the outcome of the litigation would have been different had the experimental-use exception argument, a disputed federal issue, been made. The Court found that the raising the argument would not have changed the result of the patent litigation. Therefore, the federal issue in this case does not carry significance. Moreover, the state court decision will not have a broad effect because federal courts would not be bound by any state court decisions that are contrary to federal precedent.

Resolution of the malpractice claim in federal court would disrupt the federal-state balance. As discussed above, there is not a substantial federal issue but the state courts do have an interest in regulating the lawyers within their state.

The judgment of the Supreme Court of Texas was reversed. The case was sent back to the Supreme Court of Texas for further proceedings.

What Does the Decision Mean for Litigants
Patent malpractice or licensing claims pending in federal court filed before enactment of the changes to 28 U.S.C. § 1338(a) (clarifying that state courts lack jurisdiction over legal claims arising under patent laws) and new 28 U.S.C. § 1454 (the new removal statute) on September 16, 2011 may be dismissed because the federal court does not have subject matter jurisdiction. For those considering filing such claims, the changes to 28 U.S.C. § 1338 and new 28 U.S.C. § 1454 will apply, therefore allowing litigants a chance at removal to federal court.

Strategy for Filing Patent Applications in Light of the Implementation of the First-Inventor-to-File Provisions

The First-Inventor-to-File Provisions of the America Invents Act, included within new 35 U.S.C. § 102, takes effect on March 16, 2013.   Should applicants file new patent applications before March 16, 2013?

The United States currently operates solely under a first-to-invent system.  Old 35 U.S.C. § 102, which includes first to invent, will apply to new applications filed before March 16, 2013 as well as continuation and divisional applications of the new application (as long as the continuation and divisional applications do not contain a claim that is not supported in a pre-March 16, 2013 filing).

New 35 U.S.C. § 102, which includes First-Inventor-to-File, will apply to applications with an effective filing date on or after March 16, 2013 (including any application that contains a claim with an effective filing date on or after March 16, 2013).

The United States Patent and Trademark Office has published Final Rules and Guidelines regarding the First-Inventor-to-File Provisions.   Changes to Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11023 (February 14, 2013); Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059 (February 14, 2013).

The majority of applicants will benefit by filing their new patent applications before March 16, 2013.

Benefits of filing before March 16, 2013

The benefits of filing before March 16, 2013 are primarily to avoid the effects of new 35 U.S.C. § 102.  These benefits include that if a new patent application is filed on or after March 16th, applicants will 1) no longer be able to rely on their date of invention to overcome prior art, 2) any prior art from before filing of the present application can be used to reject the present application (“otherwise available to the public”), 3) the effective filing date will go back to the date of the priority foreign filing (i.e, the grace period will be measured from the foreign priority date), and 4) any use or sale anywhere in the world will be prior art.  If the applicant has already publicly used their invention or offered it for sale outside the U.S., it will be advantageous to file before March 16, 2013.  Prior public use and sale will no longer be limited to “in the U.S.” and U.S. patents and publications will be available as of their foreign priority date if that material was disclosed in the foreign application.  In addition, there will be uncertainty regarding interpretation in courts of the new provisions.

Nonprovisional applications filed on or after March 16, 2013, claiming priority to an application filed before March 16, 2013, will be required to provide a statement that it contains or contained at any time, a claim with an effective filing date on or after March 16, 2013.   The statement must be provided within four months from the actual filing date, four months from entry into the national stage, sixteen months from the filing date of the priority application, or the date that the claim is presented with an effective date of March 16, 2013 or later is presented, whichever is later.

Benefits of filing on or after March 16, 2013

The benefits of filing on or after March 16, 2013 are that the one (1) year grace period for disclosure by an inventor can be used to overcome a prior art disclosure if the inventor’s disclosure was before the date of the prior art disclosure (NOTE: keep records of disclosure for this purpose) and 2) the Applicant can rely on common ownership or joint research agreements to overcome a rejection under 35 U.S.C. § 102.

Conclusion

Most applicants are likely better served by filing their new patent applications before March 16, 2013.

Any material on this website does not constitute legal advice and is provided for informational purposes only.  This material is not guaranteed to be current or complete.  This material does not create or constitute an attorney-client relationship.