Gunn v. Minton, Legal Malpractice, Community Property, and me.

I was at one of the firms that Minton sued and, in fact, if I recall right I met Mr. Minton during the initial interview process.  Then I left the firm. The rest, as they say, is history.  Eventually, allegedly the firm did not properly plead the experimental use exception to the on-sale bar, and that, allegedly, caused Minton to lose his case. 

The case bounced around from state to federal court, but eventually the Supreme Court, on appeal from the Texas Supreme Court, did not present a federal question and so should be decided by the state courts.  Along the way, it said that there will seldom be a "backwards looking" malpractice claim that will be in federal court.  So, if a plaintiff claims that it should have gotten a broader patent, but did not because of negligence, chances are no federal jurisdiction.

I watched the oral argument in Gunn, and the Court (a) does not like or undertand patents; and (b) realized how far astray the CAFC's jurisprudence on subject matter jurisdiction had gone.  That's a bad combination.

But I'm writing because of an odd thing I encountered in a real state case involving state marital and estate law:  the spouse of a named inventor in some community property states has an undivided equal interest in the patent under state law.  In the case I was an expert in, the firm had obtained an assignment from a husband, but not the spouse.  The result was a claim by the spouse in the patent.

In a California case, which I was not involved in, this almost worked — the Federal Circuit seemed to acknowledge the spouse's interest in the patent, but held that a form that the spouse had filled out estopped her from claiming the interest.

So, the whole point of this "it is early Monday morning so don't complain if this is stream of concious" post is:  a state judge is going to be a lot more likely to follow state law on ownership rights than a federal judge will be, so watch out for the Gunn effect on this issue!


About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

10 thoughts on “Gunn v. Minton, Legal Malpractice, Community Property, and me.

  1. 10

    “No one gets assignments from spouses”

    Maybe they should.

    Problem solved, no?

    And let’s look at the case where it almost worked – the only reason why it did not work (per the court’s writing) is that the spouse flubbed the matter and was estopped.

    Clearly, remove the flub and it works.

  2. 9

    No one gets assignments from spouses. Ergo, no company in one of these community property states where this is the law owns, fully, a patent. So, the spouse is an indispensable party, can license the patent, and so on. Again, it almost worked… once…

  3. 8

    For a non-patent example, let’s say a husband and wife jointly own a house-flipping business.

    Would you think it just as scary to apply the ownership rules to the assets of the husband/wife team?

    Patent rights are alienable personal property and the application of laws to such should not be a scary proposition.

  4. 6

    Yup, that it is. What’s really scary is that if you ask a patent lawyer, “does the spouse own anything,” they’ll all say “no;’ if you ask a marital/estate lawyer, at least in Texas, they all say “yes” and there’s even treatises (treati?) that state it as black letter law, and some states (Washington) create ownership rights in IP in certain circumstances….

  5. 3

    I am contrasting your Monday morning stream of conscience rambling with my analogy of post-all-day-Sunday-football Monday morning stream of conscience rambling.

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