Gunn v. Minton
Citation and Court
568 U.S. 251 (2013) — Supreme Court of the United States
Facts
Vernon Minton lost a federal patent lawsuit and then sued his attorneys for malpractice in Texas state court, alleging they failed to raise a timely experimental-use argument. His malpractice claim required adjudicating what would have happened in the underlying federal patent case. The Texas Supreme Court held that the malpractice claim arose under federal patent law, conferring exclusive federal jurisdiction.
Issue
Whether a state-law legal malpractice claim based on the handling of a federal patent case arises under federal patent law within the meaning of 28 U.S.C. § 1338(a).
Holding
No. The legal malpractice claim does not arise under federal patent law because the embedded federal patent issue, though necessarily raised and actually disputed, is not substantial in the relevant sense — its resolution in the malpractice case would have no effect on the federal patent system.
Rule / Doctrine
Grable test for § 1331 federal question jurisdiction over state-law claims: a federal issue embedded in a state claim confers federal question jurisdiction only if it is (1) necessarily raised, (2) actually disputed, (3) substantial — meaning the resolution matters to the federal system as a whole, not just to the parties — and (4) capable of resolution in federal court without disrupting the federal-state balance.
Significance
Gunn clarifies the “substantiality” prong of the Grable & Sons Metal Products v. Darue Engineering (2005) test, holding that a hypothetical, backward-looking patent question litigated only to resolve a state malpractice suit is not “substantial” for jurisdictional purposes. It confines Grable jurisdiction to cases where the federal issue would actually affect the federal system going forward.