Minton v. Gunn, ___ S.W.3d ___, 2011 WL 6276121 (Tex. 2011)
Brief Summary
The Supreme Court of Texas held that federal courts have exclusive jurisdiction over a legal malpractice claim arising out of underlying patent infringement litigation.
Complete Summary
A former client brought a state law legal malpractice action against his former attorney, alleging that the lawyer had negligently failed to timely plead and brief the experimental-use exception to an on-sale bar to patentability of the client’s software in the client’s underlying patent infringement claim. After the trial court granted summary judgment to the former attorney, the client appealed. The appellate court affirmed summary judgment.
The Supreme Court of Texas held that the resolution of a federal issue of the applicability of the experimental-use exception was necessary in the legal malpractice claim, and that the exception was a disputed and a substantial issue in the legal malpractice case. After analyzing the requirements of federal jurisdiction under Grable & Sons Metal Prods., Inc. v. Darue Eng’g & Mfg., 545 U.S. 308, and the U.S. Court of Appeals for the Federal Circuit’s 2007 decisions in Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, LLP, 504 F.3d 1262 (Fed. Cir. 2007) and Immunocept, LLP v. Fulbright and Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. 2007), the Supreme Court of Texas ultimately held that the former client’s legal malpractice action arising out of the underlying patent infringement claims was within the exclusive jurisdiction of the federal courts.
Significance of Opinion
This opinion is noteworthy for the fact that along with the majority of courts that have addressed this issue, the Supreme Court of Texas held that legal malpractice claims arising out of patent infringement claims fall within the exclusive jurisdiction of the federal courts, as long as a substantial and disputed issue of patent law is at issue.
For further information, please contact Terrence P. McAvoy.
This alert has been prepared by Hinshaw & Culbertson LLP to provide information on recent legal developments of interest to our readers. It is not intended to provide legal advice for a specific situation or to create an attorney-client relationship.
FIVE WEEKS LEFT TO REGISTER
for the 11th Annual LMRM Conference
Attend the 11th anniversary of the industry's premier event focused on current and important developments in the law and litigation of malpractice claims, legal malpractice insurance and risk management strategies. Each Conference panel examines recent case law and significant developments throughout the last year. One and one-half days will be devoted to legal malpractice topics, and one and one-half days will be devoted to risk management topics. The Conference will be held in Chicago at The Westin Chicago River North.
For more information on the 2012 LMRM Conference, including the full schedule, please visit the Conference website at www.lmrm.com.
Follow LMRM on Twitter.
|