Gunn v. Minton

(Slip Opinion) OCTOBER TERM, 2012 1

Syllabus

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-

2 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-

Cite as: 568 U. S. ____ (2013) 3

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) 1

Opinion of the Court

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

2 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

Cite as: 568 U. S. ____ (2013) 3

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

4 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

Cite as: 568 U. S. ____ (2013) 5

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

Cite as: 568 U. S. ____ (2013) 7

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-

Cite as: 568 U. S. ____ (2013) 9

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-

Cite as: 568 U. S. ____ (2013) 11

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

well-versed in that subject matter”). It is true that a

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)

13

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.