Gunn v. Minton: Supreme Court Narrows Arising Under Jurisdiction for Patent Cases

By Dennis Crouch

Gunn v. Minton, 568 U. S. ____ (Supreme Court 2013)

In a 9-0 decision, the Supreme Court has limited the scope of "arising under" jurisdiction for patent cases and held that the Minton's patent litigation malpractice case does not arise under the patent laws and therefore is not amenable to exclusive federal jurisdiction. This decision collaterally overrules the Federal Circuit's prior case law in Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L. L. P., 504 F. 3d 1262 (2007) and Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F. 3d 1281 (2007)). As I discuss at the end of this essay, the America Invents Act of 2011 expanded the scope of federal court jurisdiction and thus counteracts some of the impact of this decision.

28 U. S. C. §1338(a) indicates that federal "district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents" and that the jurisdiction "shall be exclusive of the courts of the states." (Note, this language has now been somewhat amended by the AIA).

Gunn used to be Minton's attorney and represented Minton in prior patent infringement litigation. However, in that prior litigation, the district court declared Minton's patent invalid because he had placed it "on sale" more than one year prior to filing his application. Minton later found that he may have won under the "experimental use" exception to the on-sale bar, but Gunn had allegedly failed to advise him on that front. Minton then sued Gunn for attorney malpractice in Texas state court. However, after losing in State court, Minton changed heart and asked that the case be sent to Federal Court based upon Section 1338(a)'s provision for exclusive federal jurisdiction over any case "arising under any Act of Congress relating to patents." The Texas Supreme Court agreed with Minton and found that the exclusivity prong of the federal law denied jurisdiction to the state. Gunn then petitioned the Supreme Court to decide the scope of federal arising under jurisdiction in this case.

The "arising under" language used in Section 1338(a) has its foundation in the U.S. Constitution. Article III states that "[t]he judicial Power shall extend to all Cases, in Law and Equity, arising under this Constitution." §1338(a) language is also parallel to §1331's general principle of federal court jurisdiction over "all civil actions arising under the Constitution, laws, or treaties of the United States." §1338(a) is particularly limited to "any civil action arising under any Act of Congress relating to patents." However, the statute is also particularly strong because, unlike most causes of action, the statute provides for exclusive federal jurisdiction if the arising under condition is met. §1338(a).

In most patent cases the arising under analysis is simple because the complaint asserts a cause of action that is based on federal patent law, such as patent infringement or declaratory judgment of invalidity. Supreme Court has additionally held that arising under jurisdiction may exist in cases where the cause of action is not based upon federal law, but where there is an underlying federal issue arising from the well pled complaint. Most importantly, see Grable & Sons Metal Products, Inc. v. Darue Engineering & Mfg., 545 U. S. 308 (2005). In Grable, the Supreme Court indicated that this secondary form of arising under jurisdiction only exists when the claim made in the complaint "[1] necessarily raise[s] a stated federal issue, [2] actually disputed and [3] substantial, [4] which a federal forum may entertain without disturbing any congressionally approved balance of federal and state judicial responsibilities." Grable was an interpretation of §1331 arising under jurisdiction, but the court previously held in Christianson v. Colt Indus. that §1331 arising under analysis applies to §1338(a) analysis as well. Christianson v. Colt Industries Operating Corp., 486 U. S. 800, 808–809 (1988).

Regarding the present case, we know that malpractice is ordinarily a state law claim and thus we need to consider whether the case qualifies under Grable. On that point, the Supreme Court agreed that [1] Minton's "experimental use" theory was a federal patent question necessary for his case and that [2] the issue was actually disputed. However, the Court found Minton's case failed [3] to raise a "substantial" federal issue with [4] the appropriate balance of state and federal interests.

Here, the substantiality requirement is focused on the impact that the case may have on the federal system as a whole. The court writes:

[T]he federal issue in this case is not substantial in the relevant sense…. I]t is not enough that the federal issue be significant to the particular parties in the immediate suit; that will always be true when the state claim "necessarily raise[s]" a disputed federal issue, as Grable separately requires. The substantiality inquiry under Grable looks instead to the importance of the issue to the federal system as a whole.

This case, the court found carries no significance with regard to the federal system:

Because of the backward-looking nature of a legal malpractice claim, the question is posed in a merely hypothetical sense: If Minton's lawyers had raised a timely experimental-use argument, would the result in the patent infringement proceeding have been different? No matter how the state courts resolve that hypothetical "case within a case," it will not change the real-world result of the prior federal patent litigation. Minton's patent will remain invalid.

At the creation of the Federal Circuit, patent law was given a somewhat special status based upon the congressional sense for national uniformity of the patent law. The Supreme Court confirmed that notion in Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141 (1989). Here, the Supreme Court found that the sense of national uniformity is not disturbed by state law decisions since (1) the federal courts are of course not bound by state court decisions; and these particular malpractice proceedings only ask hypothetical patent questions of "what would have happened."

One point that Minton raised in the case is that the Texas state court applied patent law doctrine in a way that varies from Federal Circuit precedent. On that point, the Supreme Court merely stated that "state courts can be expected to hew closely to the pertinent federal precedents" and that issues not already covered by federal precedent will eventually be "decided by a federal court in the context of an actual patent case, with review in the Federal Circuit. If the question arises frequently, it will soon be resolved within the federal system, laying to rest any contrary state court precedent." This is the one point where the Supreme Court decision is somewhat disingenuous since state courts are not obligated to follow precedent set by either district courts or the Federal Circuit. Thus, the reality is that it is well within a state court's power to unsettle issues seemingly well-settled by Federal Circuit precedent.

Although not so holding, the Supreme Court also suggested that state court decisions on patent issues should not have preclusive effect on other courts. Thus, a state court decision involving a licensing dispute that results in invalidation of a patent would have no preclusive effect on either the USPTO or other Federal Courts. Rather, "the result would be limited to the parties and patents that had been before the state court."

Since Minton failed to prove a substantial Federal interest in deciding the state cause of action., it also follows that Minton fails the fourth prong of Grable that involves the balancing of State and Federal interests.

In its conclusion, the Court makes a clear statement of its decision:

As we recognized a century ago, "[t]he Federal courts have exclusive jurisdiction of all cases arising under the patent laws, but not of all questions in which a patent may be the subject-matter of the controversy." New Marshall Engine Co. v. Marshall Engine Co., 223 U. S. 473 (1912). In this case, although the state courts must answer a question of patent law to resolve Minton's legal malpractice claim, their answer will have no broader effects. It will not stand as binding precedent for any future patent claim; it will not even affect the validity of Minton's patent. Accordingly, there is no "serious federal interest in claiming the advantages thought to be inherent in a federal forum," Grable. Section 1338(a) does not deprive the state courts of subject matter jurisdiction.

The judgment of the Supreme Court of Texas is reversed, and the case is remanded for further proceedings not inconsistent with this opinion.

 On remand, the Texas Supreme Court will now be asked to decide the merits of Minton's appeal rather than merely the jurisdictional question.

= = = = =

In many ways, this decision is the echo of EBay and MedImmne where the court basically said: patent litigation is not special, it is just litigation. Patent cases are not untouchable by state courts and Congressional statements regarding the uniformity principle are not statements also declaring that patent law is especially unique.

= = = = =

Impact: This case will have some immediate impact in that patent law malpractice suits currently being litigated in federal court, absent special circumstances or diversity, should be dismissed for lack of subject matter jurisdiction. And, malpractice cases will likely be almost uniformly heard in state court going forward.

Role of the AIA: For licensing dispute, the decision here means that few breach-of-contract allegations will be seen as arising under the patent law. However, the impact of this case on licensing disputes is likely wholly overwhelmed by the changes to §1338(a) and the new removal statue 28 U.S.C. §1454. The new law does not apply to the Gunn case because the complaint was filed before the law was enacted. However, under the new law, the question is not whether the "civil action" arises under the patent laws, but instead whether the lawsuit involves "any claim for relief arising under any Act of Congress relating to patents." Section 1454 makes clear that the federal court will have jurisdiction whenever "any party" asserts a claim arising under the patent laws. Thus, in a breach-of-patent-license dispute it is almost always the case that the accused breaching party can assert a counterclaim of patent invalidity. When that occurs, the new law expressly eliminates state court jurisdiction and offers an option for removal to Federal Court rather than straight dismissal. This change in the law essentially overrules the Supreme Court's decision in Holmes Group, Inc. v. Vornado Aircirculation Systems, Inc., 535 U.S. 826 (2002). In Holmes Group, the Supreme Court held that patent claims that arise only in a counterclaim did not trigger Federal jurisdiction under §1338(a).

63 thoughts on “Gunn v. Minton: Supreme Court Narrows Arising Under Jurisdiction for Patent Cases

  1. 63

    182, I will concede the point that the State exclusion has been "broadened" to the extent that "civil action" is construed to not include counterclaims.

    But the scope of Federal original jusrisdiction is unchanged. It still relates to civil action suggesting that Federal original jurisdiction cannot be found in a counterclaim only.

    Do you agree?

    And, further would you agree then that Dennis’ statement about overruling the Holmes Group case is misleading?

  2. 62

    Consider the situation where a patent is owned by a person that dies or gets a divorce. A party in a state probate or family law court contends that the patent has no value because it was filed more than one year after a printed publication showing the invention, while another party in state court says the patent is worth millions, and that the patent is presumed valid and the evidence for prior use is not clear and convincing. There is no infringement issue. Should this be removed to federal court? Would the presence of a related patent license to a third party change the outcome?

    Whether section 1454 exceeds the bounds of federal/state separation of power may depend on the scope given to it by the courts. I assume that the Supreme Court will resolve that issue in due course. One possibility would be to conclude that patent licensing is strictly a state law matter, and that patent licensing does not normally provide for federal jurisdiction. That has much historical precedent.

    If a licensee desires to challenge the validity of a licensed patent, it can use a post issuance procedure in the Patent and Trademark Office if its evidence of invalidity is based on a patent or publication, or it can cease payment of the licensing fees, causing a material breach of the license, terminate the license and file a DJ action in Federal Court if the patentee persists in asserting infringement, or it can defend in state court alleging invalidity. Just as in Gunn v. Minton, there is no overriding federal reason to prohibit state court decisions on validity, as any later infringement actions will not be bound by the state court decision, and there are federal administrative paths to address the most common invalidity positions likely to be taken, and the licensee has an option to resolve the matter in federal court by simply ceasing the payment of royalties.

  3. 61

    “The “No state” language narrows the State exclusion from “civil action” to “claim for relief.” Thus, the scope of original jurisdiction and the State exclusion are different. The state exclusion on it face appears more limited than before.”

    The statute prevents any patent claim or counterclaim from being heard in state court. That is a wider exclusion from before, as least on a claim-by-claim basis. The fact that the federal courts will have supplemental jurisdiction over non-patent claims in the same case probably means that more whole cases involving a patent counter/claim will be heard at the federal level, not state.

  4. 60

    In all fairness, that was one easy prediction to make. We only have to look at the archives of this site to see this pattern repeated ad infinitum.

  5. 58

    It is also another example of how worthless law professors are. I have tried to work with a couple of law professors to expose corruption at the state level. The response was: it doesn’t exist, or if it does it is much less than 100 years ago, and I get paid by writing briefs in federal court so I don’t care, or I can’t make any money off that.

    Try working with a professor and you quickly find that they may have a little pet project they work on, but most of what is going through their minds is how to pick up extra money.

  6. 57

    And try talking to the FBI about this. You get “we don’t have time for things like this. It would take years to prove that.”

    The corruption is sophisticated with a level of indirection for the money.

  7. 56

    The real problem is that many state courts are corrupt-very corrupt. From my experience, I’d say third world corrupt.

    J. O’Connor is doing a great service by bringing this to the attention of people. Basically, in a lot of state courts the deal is you have to retain a local counsel who then figures out how to pay off the judge and all the mouths at the court house. The person who wins is the one that shovels the most dough into the mouth of the corrupt judge.

  8. 55

    For prosecution at least, why not just plead that the malpractice tort arises under the cfr governing the attorney-client relationship. That would appear to have the hallmarks of federal subject matter patent jurisdiction as you would not want the 50 states each giving its own interpretation of the cfr. Thoughts?

  9. 54

    There is much more to the opinion than that Ned.

    Much more.

    Further, that does not touch on how wrong (and why) Breyer was wrong in his dissent (not concurrence).

    He was off on another frolic, attempting to write more patent law.

  10. 53

    You know what, I think you are right, and I was wrong. I guess I always had it my mind that a state court decision that purported to “resolve” an issue of authorship would be given no effect in a future dispute between those same parties for copyright infringement.

  11. 52


    It is substantial in fact, but not substantial at the same time? I will read Robert's double-think. This is going to be interesting. That guy seems to hold up four fingers and expects us to see five because he says so.

  12. 51

    The Court is also silent on two aspects of §1338 – the AIA amended §1338 and Minton’s case is technically governed by the prior version. The very least the Court could have done was insert a footnote on these aspects.

    However, the AIA amendment to §1338 really has no effect on Minton’s case. Minton raised a single claim and Gunn did not raise a counterclaim.

  13. 50

    Ned you should read the Minton case before saying this: “The issue, to me, is substantial because it is necessary to resolve the case.” That is PRECISELY the reasoning that the Supremes just rejected. I mean that is almost exactly what Roberts said was not the way to determine whether a question was “substantial.”

  14. 49

    You should go do a search in the California reporters. They definitely decide these kinds of issues all the time, generally as part of contract cases. Here are two I know of, off the top of my head. Durgom, 74 Cal. App. 4th 178 (deciding whether copyright had lapsed under copyright act, as necessary part of resolving a contract dispute); MVP v Frost, 210 Cal. App. 4th 1333 (interpreting 204(a) to determine whether there was a valid transfer of rights under signed writing requirement). You seem to misunderstand the scope of the exclusive jurisdiction provisions. State courts can and do decide patent and copyright issues when they are necessary to resolving a state claim, such as breach of contract or legal malpractice. That is exactly what the Supreme Court just REaffirmed.

    Moreover, you still seem confused about the difference between preemption and exclusive jurisdiction. Two completely different things.

  15. 48

    anon, the case was decided "assuming" the present assignment of a future invention was an effective legal assignment. The parties did not raise that issue, and the Federal Circuit did not raise it. There was no real case or controversy on this point.

    Because of this, the concurrence was assured that the court's holding in the case would not preclude the court from deciding the assignment issue in a proper case in the future.

  16. 47

    My prediction: There will be no answer from Malcolm to this question.

    My second prediction: We will continue to see Malcolm misrepresent what the controlling law is on this matter, even though he has admitted to knowing what the controlling law is.

    My third prediction: There will be no consequence, no expungement, no deletion of this obvious tr011ing tactic. Ever.

  17. 46

    You can see the “concurrence” raise an issue that is immaterial to the case.

    According to your own provided reference of law-holding-dicta, where does an immaterial point, raised only in a concurrence rate?

    Surely, not nearly as elevated as you would do so here.

  18. 44

    Actually Ned, you are taking a dissent view and projecting it as a holding.

    Time for you to reread the case.

  19. 42

    present assignment of a future invention grants legal title to the assignee when there are in fact cases (Supreme Court, IIRC) that say just the opposite

    I think you have this opposite, Ned. See Stanford v. Roche.

  20. 41

    Dennis, I rely on your Markup of 1338(a). Assuming this markup is correct, the original Federal jurisdiction portion of the statute was not amended. The limitation on State jurisdiction, however, was narrowed. This broadened State jurisdiction.

    Your note above about the AIA states, I think, the opposite of what happened by the amendment. You seem to think the AIA broadened Federal jurisdiction original. That is not readily apparent from the amendment, at least as you report it in your Markup.

  21. 40

    Paul, even the Feds continue to say that state law applies to assignment contracts. Nevertheless, they also hold that, as a matter of FEDERAL LAW, a present assignment of a future invention grants legal title to the assignee when there are in fact cases (Supreme Court, IIRC) that say just the opposite.

  22. 38

    Hans, B has at best, equitable interest in 50% of the copyright. A has legal title.

    B can and should counterclaim for perfection of his title, and should argue that the result of his case will affect standing of A.

    Alternatively, B can request the original state court to order A to convey 50% legal title.

    A’s defense is that B never even had equitable title and that A’s title was obtained through lawful purchase.

    Lurking is the work for hire issue. The issue, to me, is substantial because it is necessary to resolve the case. Thus, I would think the Feds would have original jurisdiction. But, under the revised 1338(a), so would the State, as the State exclusion was substantially narrowed by the AIA as a declaration of right involving ownership is hardly a claim for relief under the copyright laws.

  23. 37

    Mark, I have now looked at the case and the amendment to 1338(a).

    1. The “arising under” clause is unamended and grants the District courts “original” jurisdiction.
    2. The “no state” language replaces “exclusive jurisdiction” where, if the District Courts have original jurisdiction, it is exclusive. The “No state” language narrows the State exclusion from “civil action” to “claim for relief.” Thus, the scope of original jurisdiction and the State exclusion are different. The state exclusion on it face appears more limited than before.

    Dennis stated, it seems, that the scope of Federal original jurisdiction has been broadened with the new law. That is not apparent at all. The broadening of State jurisdiction appears to have been the result. If they drafters intended otherwise, their attempt may have been a failure.

    Here is the revision per Dennis’ own markup:

    (a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. [[Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.]] [Following is added]No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. For purposes of this subsection, the term ‘State’ includes any State of the United States, the District of Columbia, the Commonwealth of Puerto Rico, the United States Virgin Islands, American Samoa, Guam, and the Northern Mariana Islands.]

  24. 36

    Huh? Ownership is necessarily determined by authorship, and I think you will find that only federal courts have jurisdiction to resolve authorship. I don’t think state courts get to decide whether a work is a work for hire because that necessarily requires a resolution of authorship.

  25. 35

    What? Quoted the AIA version of 1338(a) in it holding?

    I haven’t read the case, but if this is true then Dennis’ note about the AIA is entirely misleading.

  26. 34

    Paul, “Courts reject the PTO interpretation….”

    Since when is the PTO interpretation of substantive patent law entitled to any weight in the first place.

    When the PTO practice of issuing DNA patents was at issue, it was the vested interest of the patent owners that might be adversely affect that was given weight.

    I the PTO decided that the new law allowed them to reject a claim based on X, their opinion is not entitled to any weight on appeal.

    I just have to wonder where your statement came from.

    Recall, the Federal Circuit has several time recently admonished the PTO that it has no authority over substantive patent law issues. The most recent occurrence was in the Therasense case.

  27. 33

    As you were with North Korea, Mr. Blix, you are confused on this topic as well.

    Preemption is irrelevant to the question of who decides; thus, the fact that copyright and patent statutes have different preemption provisions is irrelevant to your hypothetical. Preemption does not equal exclusive jurisdiction — Congress can preempt state law and not provide for exclusive jurisdiction in federal court. It does that quite often in fact.

    The question of “who decides” is governed by 1338(a), which treats civil actions arising under the federal laws of copyrights and patents exactly the same.

    Finally, in your hypothetical, the state court could determine the issue of ownership of copyright — they do so all the time in precisely these kinds of circumstances. A state court would definitely have jurisdiction to consider whether a copyright is part of a corporate estate being dissolved and, if necessary, a state court could decide on the work for hire issue as a necessary component of deciding if a copyright is in fact part of the corporate estate. These are not hard questions.

  28. 32

    Interesting that patent malpractice has plaintiffs’ lawyers trying to get into federal court.

    Perhaps diversity jurisdiction is the answer.

  29. 28

    What is the state of controlling law as regards to exceptions to the printed matter doctrine?

    Why do you keep ignoring that which you know?

    Why are the rest of us perpetually exposed to this type of tr011ing?

  30. 27

    What about instructions that a robot chef follows to make novel food? Should those instructions be patentable? How about if the recipes are in a standard format for a robot to read, like printed on paper?

    And please, copyright is not the answer.

    /back to the future off

  31. 26

    I agree that the court got the legal question right. I’m just questioning the practical implications. This situation is quite different from licnesing. To find liability here, they’re going to have to go through rule 56, the presumption of validity, the viability of experimental use as a defense, and finally, the sole issue they’ll have any understanding of… trial strategy selection issues.

  32. 25

    I believe you are correct, but I also know that issue preclusion applies even to invalid orders/judgments. Oh, assume not work for hire. But this raises another question: who gets to determine whether it was work for hire? This takes you down a rabbit hole. The copyright and patent preemption statutes are different, but they have the same goal in mind.

  33. 24

    Such a great point anon.

    And, let’s not forget: Japan, Germany, and the U.S.A. are the three countries that embrace the patent system the most and the three most innovative countries.

    China is building their IP not in response to U.S. pressure, but to build their own innovators.

    Anti’s—what say you? We all know what you say. Laws of Nature!!!!! Abstract!!!! I am still waiting for answer for why the bean company didn’t have to give two other ways that their bean could be made or have their invention deemed abstract. I guess since a bean is a bean the anti’s couldn’t pull that argument off even under their robes.

  34. 23

    I’m still waiting for that very short list of that one modern advanced country that has seen the light and decided to eliminate all IP laws (copyright, trademark, patent)…


  35. 22

    What about when there are robots that you just give the design of say a motor to and they go and build it.

    Should that design that the robot can use to build the motor be eligible for a patent?

    And, please, copyright is not the right answer.

  36. 20

    Isn’t (and no small) difference the “backward-looking effect”?

    Patent ownership – as it affects standing and can be raised anytime is not such a ‘harmless’ backwards looking effect, and is this qualitatively different.

  37. 19

    link to

    A bit off topic, but consider these 3D printers. Now, when designs can be just downloaded to the printer and printed do you think the designs should be patent eligible? How about if the designs are specific to a type of printer? How about if the designs are in a standard format for printers to read?

    I think we have the bean case again. Policy should trump here.

  38. 18

    Interesting scenario, but I think it’s an easy one, since the copyright statute has work-for-hire provisions. If the artwork wasn’t a work for hire under the federal statute, then LLC never owned it and the state court couldn’t divide the ownership between A and B (artist wasn’t a party to the proceedings), and A’s assignment from artist is a good one. If it *was* a work for hire, then the state court’s division of the ownership of it was fine and could be used by B to get DJ of non-infringement before the federal court.

    Did I pass my exam?

  39. 17

    A and B form LLC. LLC engages third-party graphic artist to create art that will appear on goods company sells. Assume art is original work of authorship under copyright law. Third-party graphic artist does not assign copyright in work to company. A and B can’t get along, so one initiates state court action to dissolve. State court dissolves via summary judgment, and sets for later hearing to account for and distribute assets. At hearing, B says there’s IP in the form of copyright in work of authorship that company owns that has value. A says “Huh?” State court says “I hereby deem the copyright to be an asset of the company and I hereby order it distributed evenly among the members.” A says “Huh?”. Sometime later, A calls an IP lawyer, who says “Huh?” At lawyer’s instruction, A contacts graphic artist and says “Will you sell me the copyright in the work in exchange for a hamburger?” Graphic artist says “Yes” and executes an assignment to A. A registers the copyright and records copy of assignment. B starts new company and sells products displaying work of authorship. A sues B in federal court for copyright infringement. Does state court decision have any preclusive effect? Copyright is exclusively federal, right? And there’s a big bad preemption statute, right?

  40. 15

    We can all agree that rarely does an experimental use argument overcome an on-sale bar. And while the Sup. Ct. added a “ready to patent” requirement for an on-sale bar, being “ready to patent” means there is an invention conception 112 adequate for a “constructive” reduction to practice in a patent application. But that is not the same as an Actual reduction to practice, which requires more than a “paper” conception, no matter how detailed.
    Is there case law that just being “ready to patent” automatically ends any “experimental use” defense?
    This confusion will all go away for post March 16 filing date patents unless the Courts reject the PTO interpretation of the AIA eliminating all on-sale bars that are not also public disclosures of the invention.

  41. 14

    Indeed, and whether the Fed. Cir. has violated in that and some other contract disputes it decides the fundamental Sup. Ct. decision on what law federal courts should apply that we all had to learn in law school – Erie v. Tomkins – and the many subsequent Sup. Ct. decisions applying it.

  42. 13

    Agreed. If something is ready for patenting, as required by the on-sale bar, then it is necessarily in a state where it can be reduced to practice. And if it is reduced to practice (or at least ready to be), then there can be no experimental use. It is black-letter law that there can be no experimental use after reduction to practice.

  43. 12

    bad, what about a R&D contract — build something to these specs?

    Is the invention on sale even before it is made and reduced to practice? Delivered for testing? When?

  44. 11

    “28 U. S. C. §1338(a) indicates that federal “district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents” and that the jurisdiction “shall be exclusive of the courts of the states.” (Note, this language has now been somewhat amended by the AIA).”

    Note, however, that the Court kept quoting that new version of 1338(a) (as amended by the AIA).

  45. 10

    May be so, bja, but in this instance, SCOTUS, as well as Judge O’Malley was correct that a patent-law-related malpractice claim doesn’t “arise under” Section 1338. This situation is no different from a patent licensing agreement which is, after all, a contract which state courts have been interpreting ad infinitum.

  46. 9

    The more I see just how little federal judges and clerks know about even the basics of patent law, and now move to state judges and clerks….. maybe we do need a specially designated court.

    This will turn these malpractice cases into a carp shoot

  47. 8

    Experimental use exception to on-sale issues?

    Uh, good luck with that one.

    Experimental use for public disclosures? Sure. But if you’ve deemed it ready for sale, that bar moves in my opinion.

    I wonder how this malpractice case being financed. Surely it’s not contingent.

  48. 7

    I think the Supreme Court got it right. Whatever a state court says on the patent law issue on point, it will not affect future patent law decisions. Further, the state court will attempt to apply Federal Patent Law, just as it will attempt to apply any foreign law to resolve the malpractice issue.

  49. 6

    I have had discussions with other counsel on whether we should identify potential on sale bar activity to force this very discussion on the record. You a right that it would have been better had this been resolved during ex parte prosecution.

  50. 5

    Paul, IIRC, the Feds do a bit of bootstrapping that the Supreme Court spotted.

    1) standing is a federal issue.

    2) standing to assert a patent involves its ownership.

    3) Arguendo, when ownership is at issue as it applies to standing, the Feds use Federal Law.

    4) Thus, they convert equitable title into legal title — as a matter of Federal Law, and without considering controlling precedent to the contrary on THAT issue.

    5) Thus they say that state statute of limitations do not apply.

    It gets ugly.

  51. 4

    The question is whether there is a "federal patent common law of assignments" that governs the interpretation of an agreement to assign future patent rights or instead should that question be interpreted under traditional state law principles. 

  52. 3

    I was not aware that any legal issues remained in the Stanford v. Roche case.

    Especially any issues imagined by Justice Breyer.

  53. 2

    One interesting thing amid this mess:

    Had Minton fulfilled his duty to disclose under 37 CFR 1.56 information concerning the prior sale during prosecution, the issue of experimental use could have been resolved at some leisure, either by determination that the use was experimental, or by narrowing the claims to include some improvement made after the prior sale but before the priority date. Perhaps Minton (and/or the prosecuting attorney, if he or she was aware) bears some responsibility for that reason.

    I’m sure you attorneys always disclose this sort of thing to us when you know about it, right?

  54. 1

    Is this also of interest [as a clue as to how the Fed. Cir. might get shellaced again] re the unresolved issue raised by Justice Bryer [an issue that should have been argued by Stamford below] in the June 6, 2011 U.S. Supreme Court decision in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc.? Namely, whether State or “federal” [Fed. Cir.] contract law applies to the interpretation of employee assignments of prospective inventions?

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