Gunn v. Minton

185 L. Ed. 2d 72 · Supreme Court of the United States · 2013

Facts

Minton sued his former attorneys for malpractice in Texas state court, alleging their failure to timely raise an "experimental use" argument in a federal patent infringement suit led to his patent's invalidation. The Texas Supreme Court held that the state court lacked jurisdiction, believing the malpractice claim "arose under" federal patent law, requiring exclusive federal jurisdiction under 28 U.S.C. §1338(a).

Procedural history

Minton filed a patent infringement suit in Federal District Court, which declared his patent invalid, a decision affirmed by the Federal Circuit. He then brought a legal malpractice action in Texas state court against his attorneys, where the trial court granted summary judgment against him. The Texas Court of Appeals affirmed, but the Texas Supreme Court reversed, holding the case belonged in federal court, prompting this appeal to the U.S. Supreme Court.

Issue

Does a state law legal malpractice claim, which requires resolving a hypothetical federal patent law question, "arise under" federal patent law for purposes of exclusive federal jurisdiction under 28 U.S.C. §1338(a)?

Holding

No. The Supreme Court reversed the Texas Supreme Court, holding that §1338(a) does not deprive state courts of subject matter jurisdiction over Minton's malpractice claim.

Rule

A state-law claim "arises under" federal law for exclusive federal jurisdiction only if it "necessarily raises 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" (Grable test). The federal issue here was not "substantial" to the federal system as a whole.

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Case brief last reviewed 2026-04-18. Prepared by CaseReader from the published opinion.