Gunn v. Minton

Supreme Court of the United States · 2013 · Civil Procedure

568 U.S. 251 (2013)

Updated July 29, 2026

Civil ProcedureFederal JurisdictionArising Under JurisdictionPatent JurisdictionLegal Malpractice28 U.S.C. § 1338(a)28 U.S.C. § 1331arising under

Facts

Minton obtained a patent based substantially on a securities trading system he had previously leased to a brokerage firm. In his federal patent infringement suit, the district court held the patent invalid under the on-sale bar, and Minton's later attempt to invoke the experimental-use exception was rejected as waived. Minton then sued his attorneys in Texas state court for malpractice, alleging that their failure to timely raise the experimental-use argument caused him to lose the patent case. After the trial court granted summary judgment for the attorneys, Minton argued on appeal that the malpractice claim arose under federal patent law and therefore could not be heard in state court.

Issue

Whether a state-law legal malpractice claim based on an attorney's handling of a patent case arises under federal patent law for purposes of 28 U.S.C. § 1338(a), thereby falling within exclusive federal jurisdiction and outside state-court jurisdiction.

Rule

A state-law claim arises under federal law only if it necessarily raises a stated federal issue, actually disputed and substantial, which a federal court may entertain without disturbing the congressionally approved balance of federal and state judicial responsibilities. In the patent context, a state legal malpractice claim based on underlying patent matters will rarely, if ever, satisfy this standard because any embedded patent issue is ordinarily not substantial in the relevant sense—that is, important to the federal system as a whole.

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One of 10 multiple-choice questions for this case. Pick an answer to see why.

In Phoenix, Lena Ortiz sued her former attorney, Caleb Voss, in Arizona state court for legal malpractice. She alleges he mishandled a prior federal patent infringement suit by failing to make a patent-law argument that, if raised, would have preserved her claim and led to a victory.

Caleb moves to dismiss for lack of state-court subject matter jurisdiction, arguing the malpractice suit arises under federal patent law because proving causation requires deciding the omitted patent issue. How should the court rule?

Explanation. A state-law claim arises under federal law only if it necessarily raises a federal issue that is actually disputed, substantial, and resolvable in federal court without upsetting the federal-state balance. A malpractice claim based on prior patent litigation may satisfy the first two elements, but the embedded patent issue is ordinarily not substantial in the relevant sense because it is backward-looking and hypothetical, affecting only the parties rather than the federal system as a whole. Exclusive federal jurisdiction over actual patent cases remains intact, so the state court retains jurisdiction.