Although Minton's malpractice claim met the first two requirements, Roberts said, it failed the last two. No matter how the state courts resolved the hypothetical question of whether the patent infringement case would have had a different result if Minton's lawyers had raised an argument earlier in the case, "it will not change the real-world result of the prior federal patent litigation," he wrote. "Minton's patent will remain invalid."
And states have a special responsibility for maintaining standards among members of the licensed professions, he wrote: "We have no reason to suppose that Congressin establishing exclusive federal jurisdiction over patent casesmeant to bar from state courts state legal malpractice claims simply because they require resolution of a hypothetical patent issue."
"The chief justice took a lot of effort to try to bring even more clarity into this area of the law," said Jane Webre of Scott, Douglass & McConnico in Austin, Texas, who argued the case for the three lawyers. "It's a hard area and kind of a muddled one. Although the court couldn't quite get there to say never, never (to federal court jurisdiction), this came awfully close."
Webre said the decision will apply to hundreds of other issues. "It addresses what is the yardstick for measuring the 'arising under' jurisdiction. It has a pretty broad reach."
Minton was represented in the Supreme Court by Thomas Michel of Griffith, Jay & Michel in Fort Worth, Texas.
Ronald Mallen, principal author of the treatise Legal Malpractice filed an amicus brief supporting Gunn and noting, "Over the last five years, there has been a dramatic increase in claims against intellectual property lawyers. That increase is disproportionately high when compared to the frequency of claims against lawyers generally."
For Gunn, Wren, Slusser and Wilson, "The end-end is in sight," Webre said. "We have procedural bits we need to mop up."
Marcia Coyle writes for The National Law Journal, a Daily Report affiliate.