throbber
(Slip Opinion)
`
`
`
` OCTOBER TERM, 2012
`
`
`Syllabus
`
`1
`
` NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
`
`
`
` being done in connection with this case, at the time the opinion is issued.
`
`
`
` The syllabus constitutes no part of the opinion of the Court but has been
`
` prepared by the Reporter of Decisions for the convenience of the reader.
`
` See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
`
`
`SUPREME COURT OF THE UNITED STATES
`
`
`
` Syllabus
`
` GUNN ET AL. v. MINTON
`
`
`
`CERTIORARI TO THE SUPREME COURT OF TEXAS
` No. 11–1118. Argued January 16, 2013—Decided February 20, 2013
`
`Petitioner attorneys represented respondent Minton in a federal patent
`
`
` infringement suit. The District Court declared Minton’s patent inva-
`
` lid under the “on sale” bar since he had leased his interactive securi-
`ties trading system to a securities brokerage “more than one year
`prior to the date of the [patent] application.” 35 U. S. C. §102(b). In
`a motion for reconsideration, Minton argued for the first time that
`the lease was part of ongoing testing, and therefore fell within the
`“experimental use” exception to the on-sale bar. The District Court
`denied the motion and the Federal Circuit affirmed, concluding that
`
`
` the District Court had appropriately held that argument waived.
` Convinced that his attorneys’ failure to timely raise the argument
`
`cost him the lawsuit and led to the invalidation of his patent, Minton
`brought a legal malpractice action in Texas state court. His former
`attorneys argued that Minton’s infringement claims would have
`
`failed even if the experimental-use argument had been timely raised,
`and the trial court agreed. On appeal, Minton claimed that the fed-
`
`eral district courts had exclusive jurisdiction over claims like his un-
`der 28 U. S. C. §1338(a), which provides for exclusive federal jurisdic-
`
`tion over any case “arising under any Act of Congress relating to
`patents.” Minton argued that the state trial court had therefore
`lacked jurisdiction, and he should be able to start over with his mal-
`
`practice suit in federal court. Applying the test of Grable & Sons
`
`Metal Products, Inc. v. Darue Engineering & Mfg., 545 U. S. 308, the
`
`Texas Court of Appeals rejected Minton’s argument, proceeded to the
`merits, and determined that Minton had failed to establish experi-
`mental use. The Texas Supreme Court reversed, concluding that the
`case properly belonged in federal court because the success of Min-
`
`
`ton’s malpractice claim relied upon a question of federal patent law.
`
`Held: Section §1338(a) does not deprive the state courts of subject mat-
`
`
`
`
`
`
`
`

`
`GUNN v. MINTON
`
`
`Syllabus
`
`ter jurisdiction over Minton’s malpractice claim. Pp. 4–13.
`
`
`
`(a) Congress has authorized the federal district courts to exercise
`original jurisdiction over “any civil action arising under any Act of
`Congress relating to patents,” and further decreed that “[n]o State
`court shall have jurisdiction over any [such] claim.” §1338(a). Be-
`cause federal law did not create the cause of action asserted by Min-
`ton’s legal malpractice claim, the claim can “aris[e] under” federal pa-
`
`tent law only if it “necessarily raise[s] a stated federal issue, actually
`disputed and substantial, which a federal forum may entertain with-
`
`out disturbing any congressionally approved balance of federal and
`state judicial responsibilities.” Grable, 545 U. S., at 314. Pp. 4–6.
`(b) Applying Grable’s inquiry here, it is clear that Minton’s legal
`
`
`malpractice claim does not arise under federal patent law. Pp. 6–12.
`
`
`(1) Resolution of a federal patent question is “necessary” to Min-
`ton’s case. To prevail on his claim, Minton must show that an exper-
`imental-use argument would have prevailed if only petitioners had
`timely made it in the earlier patent litigation. That hypothetical pa-
`tent case within the malpractice case must be resolved to decide Min-
`
`ton’s malpractice claim. P. 7.
`
`
`(2) The federal issue is also “actually disputed.” Minton argues
`that the experimental-use exception applied, which would have saved
`
`his patent from the on-sale bar; petitioners argue that it did not.
`Pp. 7–8.
`
`
`(3) Minton’s argument founders, however, on Grable’s substanti-
`ality requirement. The substantiality inquiry looks to the importance
`of the issue to the federal system as a whole. Here, the federal issue
`does not carry the necessary significance. No matter how the state
`courts resolve the hypothetical “case within a case,” the real-world
`result of the prior federal patent litigation will not change. Nor will
`allowing state courts to resolve these cases undermine “the develop-
`
`ment of a uniform body of [patent] law.” Bonito Boats, Inc. v. Thun-
`der Craft Boats, Inc., 489 U. S. 141, 162. The federal courts have ex-
`clusive jurisdiction over actual patent cases, and in resolving the
`
`nonhypothetical patent questions those cases present they are of
`course not bound by state precedents. Minton suggests that state
`courts’ answers to hypothetical patent questions can sometimes have
`real-world effect on other patents through issue preclusion, but even
`assuming that is true, such “fact-bound and situation-specific” effects
`are not sufficient to establish arising under jurisdiction, Empire
`HealthChoice Assurance, Inc. v. McVeigh, 547 U. S. 677, 701. Finally,
`
`the federal courts’ greater familiarity with patent law is not enough,
`by itself, to trigger the federal courts’ exclusive patent jurisdiction.
`
`Pp. 8–12.
`
`
`(4) It follows from the foregoing that Minton does not meet Gra-
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`
`

`
`3
`
`
`Cite as: 568 U. S. ____ (2013)
`
`
`Syllabus
`
`ble’s fourth requirement, which is concerned with the appropriate
`
`
`federal-state balance. There is no reason to suppose that Congress
`meant to bar from state courts state legal malpractice claims simply
`
`because they require resolution of a hypothetical patent issue. P. 12.
`355 S. W. 3d 634, reversed and remanded.
` ROBERTS, C. J., delivered the opinion for a unanimous Court.
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`
`
` Cite as: 568 U. S. ____ (2013)
`
`Opinion of the Court
`
`1
`
`
` NOTICE: This opinion is subject to formal revision before publication in the
`
`
`
` preliminary print of the United States Reports. Readers are requested to
`
` notify the Reporter of Decisions, Supreme Court of the United States, Wash-
`
` ington, D. C. 20543, of any typographical or other formal errors, in order
`
`
` that corrections may be made before the preliminary print goes to press.
`
`
`
`
`SUPREME COURT OF THE UNITED STATES
`
`_________________
`
` No. 11–1118
`_________________
`
` JERRY W. GUNN, ET AL., PETITIONERS v.
`
` VERNON F. MINTON
`
`
`
`ON WRIT OF CERTIORARI TO THE SUPREME COURT OF TEXAS
`
`[February 20, 2013]
` CHIEF JUSTICE ROBERTS delivered the opinion of the
`Court.
`
`Federal courts have exclusive jurisdiction over cases
`
`
`“arising under any Act of Congress relating to patents.”
`
`28 U. S. C. §1338(a). The question presented is whether a
`state law claim alleging legal malpractice in the handling
`of a patent case must be brought in federal court.
`
`I
`In the early 1990s, respondent Vernon Minton devel-
`
`oped a computer program and telecommunications net-
`
`work designed to facilitate securities trading. In March
`1995, he leased the system—known as the Texas Comput-
`er Exchange Network, or TEXCEN—to R. M. Stark & Co.,
`
`
`a securities brokerage. A little over a year later, he ap-
`plied for a patent for an interactive securities trading
`system that was based substantially on TEXCEN. The
`U. S. Patent and Trademark Office issued the patent in
`January 2000.
`Patent in hand, Minton filed a patent infringement suit
`
`in Federal District Court against the National Association
`
`of Securities Dealers, Inc. (NASD) and the NASDAQ Stock
`
`Market, Inc. He was represented by Jerry Gunn and the
`
`
`
`
`
`

`
`GUNN v. MINTON
`
`Opinion of the Court
`other petitioners. NASD and NASDAQ moved for sum-
`mary judgment on the ground that Minton’s patent was
`invalid under the “on sale” bar, 35 U. S. C. §102(b). That
`provision specifies that an inventor is not entitled to a
`patent if “the invention was . . . on sale in [the United
`States], more than one year prior to the date of the appli-
`cation,” and Minton had leased TEXCEN to Stark more
`than one year prior to filing his patent application. Reject-
`ing Minton’s argument that there were differences be-
`tween TEXCEN and the patented system that precluded
`application of the on-sale bar, the District Court granted
`the summary judgment motion and declared Minton’s
`patent invalid. Minton v. National Assn. of Securities
`Dealers, Inc., 226 F. Supp. 2d 845, 873, 883–884 (ED Tex.
`2002).
`
`Minton then filed a motion for reconsideration in the
`District Court, arguing for the first time that the lease
`agreement with Stark was part of ongoing testing of
`TEXCEN and therefore fell within the “experimental use”
`exception to the on-sale bar. See generally Pfaff v. Wells
`Electronics, Inc., 525 U. S. 55, 64 (1998) (describing the
`exception). The District Court denied the motion. Minton
`v. National Assn. of Securities Dealers, Inc., No. 9:00–cv–
`00019 (ED Tex., July 15, 2002).
`
`Minton appealed to the U. S. Court of Appeals for the
`Federal Circuit. That court affirmed, concluding that the
`District Court had appropriately held Minton’s experi-
`
`mental-use argument waived. See Minton v. National
`
`Assn. of Securities Dealers, Inc., 336 F. 3d 1373, 1379–
`1380 (CA Fed. 2003).
`
`
`Minton, convinced that his attorneys’ failure to raise the
`experimental-use argument earlier had cost him the law-
`suit and led to invalidation of his patent, brought this
`malpractice action in Texas state court. His former law-
`yers defended on the ground that the lease to Stark was
`not, in fact, for an experimental use, and that therefore
`
`
`
`2
`
`
`
`
`
`
`
`
`

`
`
`
`3
`
`
`
` Cite as: 568 U. S. ____ (2013)
`
`Opinion of the Court
`Minton’s patent infringement claims would have failed
`even if the experimental-use argument had been timely
`raised. The trial court agreed, holding that Minton had
`put forward “less than a scintilla of proof ” that the lease
`had been for an experimental purpose. App. 213. It ac-
`cordingly granted summary judgment to Gunn and the
`other lawyer defendants.
`
`On appeal, Minton raised a new argument: Because his
`
`legal malpractice claim was based on an alleged error in a
`patent case, it “aris[es] under” federal patent law for
`purposes of 28 U. S. C. §1338(a). And because, under
`§1338(a), “[n]o State court shall have jurisdiction over any
`claim for relief arising under any Act of Congress relating
`to patents,” the Texas court—where Minton had originally
`brought his malpractice claim—lacked subject matter
`jurisdiction to decide the case. Accordingly, Minton ar-
`
`gued, the trial court’s order should be vacated and the case
`dismissed, leaving Minton free to start over in the Federal
`
`District Court.
`
`A divided panel of the Court of Appeals of Texas rejected
`Minton’s argument. Applying the test we articulated in
`Grable & Sons Metal Products, Inc. v. Darue Engineering
`& Mfg., 545 U. S. 308, 314 (2005), it held that the federal
`interests implicated by Minton’s state law claim were not
`sufficiently substantial to trigger §1338 “arising under”
`jurisdiction.
`It also held that finding exclusive federal
`jurisdiction over state legal malpractice actions would,
`contrary to Grable’s commands, disturb the balance of
`federal and state judicial responsibilities. Proceeding to
`the merits of Minton’s malpractice claim, the Court of
`Appeals affirmed the trial court’s determination that
`Minton had failed to establish experimental use and that
`arguments on that ground therefore would not have saved
`his infringement suit.
`
`The Supreme Court of Texas reversed, relying heavily
`on a pair of cases from the U. S. Court of Appeals for the
`
`
`
`
`
`
`
`
`
`
`
`

`
`GUNN v. MINTON
`
`Opinion of the Court
`Federal Circuit. 355 S. W. 3d 634, 641–642 (2011) (dis-
`
`cussing Air Measurement Technologies, Inc. v. Akin Gump
`Strauss Hauer & Feld, L. L. P., 504 F. 3d 1262 (2007);
`Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F. 3d
`1281 (2007)). The Court concluded that Minton’s claim
`involved “a substantial federal issue” within the meaning
`of Grable “because the success of Minton’s malpractice
`claim is reliant upon the viability of the experimental use
`exception as a defense to the on-sale bar.” 355 S. W. 3d, at
`644. Adjudication of Minton’s claim in federal court was
`consistent with the appropriate balance between federal
`and state judicial responsibilities, it held, because “the
`federal government and patent litigants have an interest
`in the uniform application of patent law by courts well-
`versed in that subject matter.” Id., at 646 (citing Im-
`munocept, supra, at 1285–1286; Air Measurement Tech-
`nologies, supra, at 1272).
`
`Justice Guzman, joined by Justices Medina and Willett,
`dissented. The dissenting justices would have held that
`the federal issue was neither substantial nor disputed,
`and that maintaining the proper balance of responsibility
`between state and federal courts precluded relegating
`
`state legal malpractice claims to federal court.
`
`
`We granted certiorari. 568 U. S. ___ (2012).
`
`II
`
`“Federal courts are courts of limited jurisdiction,” pos-
`sessing “only that power authorized by Constitution and
`statute.” Kokkonen v. Guardian Life Ins. Co. of America,
`511 U. S. 375, 377 (1994). There is no dispute that the
`Constitution permits Congress to extend federal court
`jurisdiction to a case such as this one, see Osborn v. Bank
`of United States, 9 Wheat. 738, 823–824 (1824); the ques-
`tion is whether Congress has done so, see Powell v.
`McCormack, 395 U. S. 486, 515–516 (1969).
`
`As relevant here, Congress has authorized the federal
`
`
`
`4
`
`
`
`
`
`
`

`
`5
`
`
`
`
`
`
`
` Cite as: 568 U. S. ____ (2013)
`
`Opinion of the Court
`district courts to exercise original jurisdiction in “all civil
`actions arising under the Constitution, laws, or treaties of
`the United States,” 28 U. S. C. §1331, and, more particu-
`larly, over “any civil action arising under any Act of Con-
`gress relating to patents,” §1338(a). Adhering to the
`demands of “[l]inguistic consistency,” we have interpreted
`the phrase “arising under” in both sections identically,
`applying our §1331 and §1338(a) precedents interchange-
`ably. See Christianson v. Colt Industries Operating Corp.,
`486 U. S. 800, 808–809 (1988). For cases falling within
`the patent-specific arising under jurisdiction of §1338(a),
`however, Congress has not only provided for federal juris-
`diction but also eliminated state jurisdiction, decreeing
`that “[n]o State court shall have jurisdiction over any
`claim for relief arising under any Act of Congress relating
`to patents.” §1338(a) (2006 ed., Supp. V). To determine
`whether jurisdiction was proper in the Texas courts, there-
`fore, we must determine whether it would have been
`proper in a federal district court—whether, that is, the
`case “aris[es] under any Act of Congress relating to pa-
`tents.”
`
`For statutory purposes, a case can “aris[e] under” feder-
`
`al law in two ways. Most directly, a case arises under
`federal law when federal law creates the cause of action
`asserted. See American Well Works Co. v. Layne & Bowler
`Co., 241 U. S. 257, 260 (1916) (“A suit arises under the law
`that creates the cause of action”). As a rule of inclusion,
`this “creation” test admits of only extremely rare excep-
`
`tions, see, e.g., Shoshone Mining Co. v. Rutter, 177 U. S.
`505 (1900), and accounts for the vast bulk of suits that
`
`arise under federal law, see Franchise Tax Bd. of Cal. v.
`Construction Laborers Vacation Trust for Southern Cal.,
`463 U. S. 1, 9 (1983). Minton’s original patent infringe-
`ment suit against NASD and NASDAQ, for example, arose
`under federal law in this manner because it was author-
`ized by 35 U. S. C. §§271, 281.
`
`
`
`
`
`

`
`
`
`
`
`6
`
`
`GUNN v. MINTON
`
`Opinion of the Court
`But even where a claim finds its origins in state rather
`
`than federal law—as Minton’s legal malpractice claim
`indisputably does—we have identified a “special and small
`category” of cases in which arising under jurisdiction still
`lies. Empire HealthChoice Assurance, Inc. v. McVeigh, 547
`
`U. S. 677, 699 (2006). In outlining the contours of this
`slim category, we do not paint on a blank canvas. Unfor-
`tunately, the canvas looks like one that Jackson Pollock
`got to first. See 13D C. Wright, A. Miller, E. Cooper, & R.
`Freer, Federal Practice and Procedure §3562, pp. 175–176
`
`(3d ed. 2008) (reviewing general confusion on question).
`
`In an effort to bring some order to this unruly doctrine
`
`several Terms ago, we condensed our prior cases into the
`following inquiry: Does the “state-law claim necessarily
`raise a stated federal issue, actually disputed and sub-
`stantial, which a federal forum may entertain without
`disturbing any congressionally approved balance of federal
`and state judicial responsibilities”? Grable, 545 U. S., at
`
`314. That is, federal jurisdiction over a state law claim
`will lie if a federal issue is: (1) necessarily raised, (2) actu-
`ally disputed, (3) substantial, and (4) capable of resolution
`in federal court without disrupting the federal-state bal-
`ance approved by Congress. Where all four of these re-
`quirements are met, we held, jurisdiction is proper be-
`cause there is a “serious federal interest in claiming the
`advantages thought to be inherent in a federal forum,”
`which can be vindicated without disrupting Congress’s
`intended division of labor between state and federal
`courts. Id., at 313–314.
`
`
`
`
`
`
`
`
`III
` Applying Grable’s inquiry here, it is clear that Minton’s
`legal malpractice claim does not arise under federal patent
`law. Indeed, for the reasons we discuss, we are comforta-
`ble concluding that state legal malpractice claims based on
`underlying patent matters will rarely, if ever, arise under
`
`
`
`

`
`
`
`7
`
`
`
` Cite as: 568 U. S. ____ (2013)
`
`Opinion of the Court
`federal patent law for purposes of §1338(a). Although
`
`such cases may necessarily raise disputed questions of
`patent law, those cases are by their nature unlikely to
`have the sort of significance for the federal system neces-
`sary to establish jurisdiction.
`A
`
`To begin, we acknowledge that resolution of a federal
`patent question is “necessary” to Minton’s case. Under
`Texas law, a plaintiff alleging legal malpractice must
`establish four elements: (1) that the defendant attorney
`owed the plaintiff a duty; (2) that the attorney breached
`that duty; (3) that the breach was the proximate cause of
`the plaintiff ’s injury; and (4) that damages occurred. See
`Alexander v. Turtur & Associates, Inc., 146 S. W. 3d 113,
`117 (Tex. 2004). In cases like this one, in which the attor-
`ney’s alleged error came in failing to make a particular
`argument, the causation element requires a “case within a
`case” analysis of whether, had the argument been made,
`the outcome of the earlier litigation would have been
`different. 355 S. W. 3d, at 639; see 4 R. Mallen & J.
`
`Smith, Legal Malpractice §37:15, pp. 1509–1520 (2012).
`To prevail on his legal malpractice claim, therefore, Min-
`ton must show that he would have prevailed in his federal
`patent infringement case if only petitioners had timely
`made an experimental-use argument on his behalf. 355
`
`S. W. 3d, at 644. That will necessarily require application
`of patent law to the facts of Minton’s case.
`B
`
`The federal issue is also “actually disputed” here—
`indeed, on the merits, it is the central point of dispute.
`Minton argues that the experimental-use exception
`properly applied to his lease to Stark, saving his patent
`
`from the on-sale bar; petitioners argue that it did not.
`
`This is just the sort of “‘dispute . . . respecting the . . .
`
`
`
`
`
`
`
`

`
`8
`
`
`GUNN v. MINTON
`
`Opinion of the Court
` effect of [federal] law’” that Grable envisioned. 545 U. S.,
`
`at 313 (quoting Shulthis v. McDougal, 225 U. S. 561, 569
`(1912)).
`
`
`
`C
`Minton’s argument founders on Grable’s next require-
`
`ment, however, for the federal issue in this case is not
`substantial in the relevant sense. In reaching the opposite
`conclusion, the Supreme Court of Texas focused on the
`importance of the issue to the plaintiff ’s case and to the
`parties before it. 355 S. W. 3d, at 644 (“because the suc-
`cess of Minton’s malpractice claim is reliant upon the
`viability of the experimental use exception as a defense to
`
` the on-sale bar, we hold that it is a substantial federal
`issue”); see also Air Measurement Technologies, 504 F. 3d,
`at 1272 (“the issue is substantial, for it is a necessary
`element of the malpractice case”). As our past cases show,
`however, it is not enough that the federal issue be signifi-
`
`cant 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 sys-
`
`tem as a whole.
` In Grable itself, for example, the Internal Revenue
`
`Service had seized property from the plaintiff and sold it
`to satisfy the plaintiff ’s federal tax delinquency. 545
`U. S., at 310–311. Five years later, the plaintiff filed a
`state law quiet title action against the third party that
`had purchased the property, alleging that the IRS had
`failed to comply with certain federally imposed notice
`
`requirements, so that the seizure and sale were invalid.
`Ibid. In holding that the case arose under federal law, we
`
`primarily focused not on the interests of the litigants
`themselves, but rather on the broader significance of the
`notice question for the Federal Government. We empha-
`
`
`
`
`
`
`
`

`
`9
`
`
`
`
`
`
`
`
`
` Cite as: 568 U. S. ____ (2013)
`
`Opinion of the Court
`sized the Government’s “strong interest” in being able to
`recover delinquent taxes through seizure and sale of prop-
`erty, which in turn “require[d] clear terms of notice to
`allow buyers . . . to satisfy themselves that the Service has
`
`touched the bases necessary for good title.” Id., at 315.
`The Government’s “direct interest in the availability of a
`
`federal forum to vindicate its own administrative action”
`made the question “an important issue of federal law that
`
`sensibly belong[ed] in a federal court.” Ibid.
`
`A second illustration of the sort of substantiality we
`require comes from Smith v. Kansas City Title & Trust
`Co., 255 U. S. 180 (1921), which Grable described as “[t]he
`classic example” of a state claim arising under federal law.
`
`545 U. S., at 312. In Smith, the plaintiff argued that the
`defendant bank could not purchase certain bonds issued
`
`by the Federal Government because the Government had
`acted unconstitutionally in issuing them. 255 U. S., at
`198. We held that the case arose under federal law, be-
`cause the “decision depends upon the determination” of
`“the constitutional validity of an act of Congress which is
`
`directly drawn in question.” Id., at 201. Again, the rele-
`
`vant point was not the importance of the question to the
`parties alone but rather the importance more generally of
`a determination that the Government “securities were
`issued under an unconstitutional law, and hence of no
`validity.” Ibid.; see also Merrell Dow Pharmaceuticals Inc.
`v. Thompson, 478 U. S. 804, 814, n. 12 (1986).
`
`Here, the federal issue carries no such significance.
`Because of the backward-looking nature of a legal mal-
`practice claim, the question is posed in a merely hypothet-
`ical sense: If Minton’s lawyers had raised a timely experi-
`mental-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
`
`
`
`
`
`

`
`
`
`10
`
`
`GUNN v. MINTON
`
`Opinion of the Court
`
`invalid.
`
`Nor will allowing state courts to resolve these cases
`undermine “the development of a uniform body of [patent]
`law.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489
`U. S. 141, 162 (1989). Congress ensured such uniformity
`by vesting exclusive jurisdiction over actual patent cases
`in the federal district courts and exclusive appellate juris-
`diction in the Federal Circuit. See 28 U. S. C. §§1338(a),
`1295(a)(1). In resolving the nonhypothetical patent ques-
`tions those cases present, the federal courts are of course
`
`not bound by state court case-within-a-case patent rulings.
`See Tafflin v. Levitt, 493 U. S. 455, 465 (1990). In any
`
`event, the state court case-within-a-case inquiry asks
`what would have happened in the prior federal proceeding
`if a particular argument had been made. In answering
`that question, state courts can be expected to hew closely
`to the pertinent federal precedents. It is those precedents,
`after all, that would have applied had the argument been
`made. Cf. ibid. (“State courts adjudicating civil RICO
`claims will . . . be guided by federal court interpretations
`of the relevant federal criminal statutes, just as federal
`courts sitting in diversity are guided by state court inter-
`pretations of state law”).
`
`As for more novel questions of patent law that may arise
`for the first time in a state court “case within a case,” they
`will at some point be decided by a federal court in the
`context of an actual patent case, with review in the Feder-
`al Circuit. If the question arises frequently, it will soon be
`resolved within the federal system, laying to rest any
`contrary state court precedent; if it does not arise fre-
`quently, it is unlikely to implicate substantial federal
`interests. The present case is “poles apart from Grable,”
`
`in which a state court’s resolution of the federal question
`“would be controlling in numerous other cases.” Empire
`HealthChoice Assurance, Inc., 547 U. S., at 700.
`
`Minton also suggests that state courts’ answers to hypo-
`
`
`
`
`
`

`
`
`
`
`
` 11
`
`
`
` Cite as: 568 U. S. ____ (2013)
`
`Opinion of the Court
`thetical patent questions can sometimes have real-world
`effect on other patents through issue preclusion. Brief for
`Respondent 33–36. Minton, for example, has filed what is
`known as a “continuation patent” application related to
`his original patent. See 35 U. S. C. §120; 4A D. Chisum,
`Patents §13.03 (2005) (describing continuation applica-
`tions). He argues that, in evaluating this separate appli-
`cation, the patent examiner could be bound by the Texas
`trial court’s interpretation of the scope of Minton’s original
`patent. See Brief for Respondent 35–36. It is unclear
`whether this is true. The Patent and Trademark Office’s
`Manual of Patent Examining Procedure provides that res
`judicata is a proper ground for rejecting a patent “only
`
`
`when the earlier decision was a decision of the Board of
`Appeals” or certain federal reviewing courts, giving no
`indication that state court decisions would have preclusive
`effect. See Dept. of Commerce, Patent and Trademark
`Office, Manual
`of Patent Examining Procedure
`§706.03(w), p. 700–79 (rev. 8th ed. 2012); 35 U. S. C.
`§§134(a), 141, 145; Reply Brief 9–10. In fact, Minton has
`not identified any case finding such preclusive effect based
`on a state court decision. But even assuming that a state
`court’s case-within-a-case adjudication may be preclusive
`under some circumstances, the result would be limited to
`the parties and patents that had been before the state
`court. Such “fact-bound and situation-specific” effects are
`not sufficient to establish federal arising under jurisdic-
`tion. Empire HealthChoice Assurance, Inc., supra, at 701.
`
`Nor can we accept the suggestion that the federal courts’
`greater familiarity with patent law means that legal
`malpractice cases like this one belong in federal court. See
`Air Measurement Technologies, 504 F. 3d, at 1272 (“The
`litigants will also benefit from federal judges who have
`experience in claim construction and infringement mat-
`ters”); 355 S. W. 3d, at 646 (“patent litigants have an
`interest in the uniform application of patent law by courts
`
`
`
`
`
`
`
`

`
`12
`
`
`GUNN v. MINTON
`
`Opinion of the Court
` It is true that a
`well-versed in that subject matter”).
`
`similar interest was among those we considered in Grable.
`545 U. S., at 314. But the possibility that a state court
`will incorrectly resolve a state claim is not, by itself,
`enough to trigger the federal courts’ exclusive patent
`jurisdiction, even if the potential error finds its root in a
`misunderstanding of patent law.
`There is no doubt that resolution of a patent issue in the
`
`context of a state legal malpractice action can be vitally
`important to the particular parties in that case. But
`something more, demonstrating that the question is signif-
`icant to the federal system as a whole, is needed. That is
`
`missing here.
`
`
`
`D
`It follows from the foregoing that Grable’s fourth re-
`
`
`quirement is also not met. That requirement is concerned
`with the appropriate “balance of federal and state judicial
`responsibilities.” Ibid. We have already explained the
`absence of a substantial federal issue within the meaning
`of Grable. The States, on the other hand, have “a special
`responsibility for maintaining standards among members
`of the licensed professions.” Ohralik v. Ohio State Bar
`
`Assn., 436 U. S. 447, 460 (1978). Their “interest . . . in
`regulating lawyers is especially great since lawyers are
`essential to the primary governmental function of admin-
`istering justice, and have historically been officers of the
`courts.” Goldfarb v. Virginia State Bar, 421 U. S. 773, 792
`(1975) (internal quotation marks omitted). We have no
`reason to suppose that Congress—in establishing exclu-
`sive federal jurisdiction over patent cases—meant to bar
`from state courts state legal malpractice claims simply
`because they require resolution of a hypothetical patent
`
` issue.
`
`
`
`
`
`

`
`
`
` Cite as: 568 U. S. ____ (2013)
`
`
`Opinion of the Court
`
`
`
`*
`*
`*
`
`
`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, 478
`
`(1912). In this case, although the state courts must an-
`
`swer 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, supra, at 313. Section 1338(a)
`does not deprive the state courts of subject matter juris-
`diction.
`
`The judgment of the Supreme Court of Texas is re-
`versed, and the case is remanded for further proceedings
`not inconsistent with this opinion.
`
`
`
`It is so ordered.
`
`
`
`
`
` 13

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