In Gunn v. Minton, the United States Supreme Court held that patent-related legal malpractice suits should be heard in state court. Motorola has argued to the Federal Circuit that under the Court’s Gunn rationale that appellate court lacks jurisdiction over Apple’s appeal in a suit alleging that Motorola failed to license its patents on fair, reasonable, and nondiscriminatory (FRAND) terms.
Motorola has contended that Apple’s claims, like those in Gunn, “do not require the resolution of any necessary or substantial patent issues.” Instead, they involve contract and antitrust issues. Those claims therefore should not trigger the Federal Circuit’s patent law-based jurisdiction.
Apple has countered that that Gunn involved state law claims and thus has no bearing on Apple’s federal declaratory judgment and patent misuse claims. “Only where federal patent law does not create the cause of action,” Apple has argued, “is it necessary to identify an alternative basis for jurisdiction by asking, as Gunn does, whether the claim raises a ‘necessarily disputed’ and ‘substantial’ patent law issue,”
A Wisconsin federal district court dismissed Apple’s claims, which it has appealed to the Federal Circuit. Motorola has contended that the Seventh Circuit, which normally reviews cases from the Wisconsin district courts should hear the appeal.