  United States Court of Appeals
      for the Federal Circuit
                ______________________

               NEUROREPAIR, INC.,
                 Plaintiff-Appellant,

                           v.

THE NATH LAW GROUP AND ROBERT P. COGAN,
           Defendants-Appellees,

                         AND

                     DOES 1-20,
                      Defendants.
                ______________________

                      2013-1073
                ______________________

   Appeal from the United States District Court for the
Southern District of California in No. 09-CV-0986, Judge
John A. Houston.
                ______________________

              Decided: January 15, 2015
               ______________________

    MATTHEW KLIPSTEIN, of Denver, Colorado, argued for
plaintiff-appellant.

    GREGOR A. HENSRUDE, Klinedinst PC, of San Diego,
California, argued for defendants-appellees. With him on
the brief were HEATHER L. ROSING and SAMUEL B.
STROHBEHN.
2                NEUROREPAIR, INC. v. THE NATH LAW GROUP



                 ______________________

    Before WALLACH, CHEN, and HUGHES, Circuit Judges.
WALLACH, Circuit Judge.
    The question before this court is whether a California
state court malpractice case involving patent law repre-
sentation was properly removed to a federal court. Under
the principles of Gunn v. Minton, 133 S. Ct. 1059 (2013),
it was not.
     Plaintiff-appellant NeuroRepair, Inc. (“NeuroRepair”)
appeals from a final judgment of the United States Dis-
trict Court for the Southern District of California granting
partial summary judgment in favor of defendants-
appellees The Nath Law Group and Robert P. Cogan
(collectively, “Defendants”) on July 12, 2011, as well as
the district court’s orders (1) denying NeuroRepair’s
motion for reconsideration on August 19, 2011, (2) grant-
ing Defendants’ motion in limine with respect to lost
licensing opportunity of March 12, 2012, (3) entering
judgment on September 26, 2012, in favor of Defendants,
and (4) denying NeuroRepair’s motion for reconsideration
on July 1, 2013, and all related post-judgment costs.
Based on Gunn v. Minton, this court vacates and remands
the district court’s judgments with instructions to remand
the case to California state court.
    This court “[has] jurisdiction to decide whether the
district court had jurisdiction under [28 U.S.C.] § 1338.”
C.R. Bard, Inc. v. Schwartz, 716 F.2d 874, 878 (Fed. Cir.
1983); see also Scherbatskoy v. Halliburton Co., 125 F.3d
288, 291 (5th Cir. 1997) (finding the “right to determine if
a district court has jurisdiction under [§] 1338” is a power
that “concurrently exists with [the Federal Circuit and]
the regional circuits”); Shaw v. Gwatney, 795 F.2d 1351,
1353 n.2 (8th Cir. 1986) (A federal appellate court carries
out “traditional and inherent functions [such] as deter-
NEUROREPAIR, INC. v. THE NATH LAW GROUP                     3



mining its own jurisdiction and supervising the exercise of
jurisdiction by the district courts below it.”); cf. Maddox v.
Merit Sys. Prot. Bd., 759 F.2d 9, 10 (Fed. Cir. 1985) (“If
the MSPB does not have jurisdiction, then neither do we,
except to the extent that we always have the inherent
power to determine our own jurisdiction and that of the
board.”).
                       BACKGROUND
     In December 2005, NeuroRepair retained Robert
Cogan, an attorney with The Nath Law Group, to assist in
the prosecution of certain patent applications. Over time,
NeuroRepair became increasingly dissatisfied with what
it viewed as slow progress and excessive legal fees, and in
August 2007 NeuroRepair requested that Mr. Cogan
transfer the relevant files to another law firm, Welsh &
Katz, to continue prosecution before the United States
Patent and Trademark Office (“USPTO”). In September
2007, Defendants filed a request to withdraw from repre-
sentation of NeuroRepair before the USPTO, but contin-
ued to assist NeuroRepair with other matters.
    NeuroRepair filed suit against Defendants in the San
Diego Superior Court on March 20, 2009, alleging profes-
sional negligence, breach of fiduciary duty, breach of
written contract, breach of oral contract, breach of implied
covenant of good faith and fair dealing, negligent misrep-
resentation, and false promise. Defendants removed the
case to federal district court on May 7, 2009, on the
ground that it was “a civil action relating to patents.”
J.A. 55.
     After the district court entered judgment in Defend-
ants’ favor on September 26, 2012, NeuroRepair timely
filed this appeal challenging the district court’s subject
matter jurisdiction. The principal issue this court must
address is whether jurisdiction in the district court was
proper in light of the Supreme Court’s recent pronounce-
ment in Gunn v. Minton.
4                NEUROREPAIR, INC. v. THE NATH LAW GROUP



                        DISCUSSION
                   I. Standard of review
    “We review issues of jurisdiction de novo.” Prasco,
LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1335 (Fed.
Cir. 2008). Under 28 U.S.C. § 1441(a) (2012), a defendant
may remove to federal district court “any civil action
brought in a State court of which the district courts of the
United States have original jurisdiction.” As this court
stated in Jim Arnold Corp. v. Hydrotech Systems, Inc.:
    The question we must answer . . . is whether fed-
    eral subject-matter jurisdiction would exist over
    this case had it originally been filed in federal
    court. If the answer is yes, then removal was
    proper, and the matter is before us on the merits;
    if the answer is no, then removal was improper
    and federal courts are without jurisdiction to de-
    termine the cause.
109 F.3d 1567, 1571 (Fed. Cir. 1997).
              II. Subject matter jurisdiction
    At issue in this case is whether the district court
would have had original jurisdiction under 28 U.S.C.
§ 1338, 1 which gives federal district courts original juris-
diction over “any civil action arising under any Act of




    1   There does not appear to be a basis for jurisdiction
under 28 U.S.C. § 1332 (diversity of citizenship).
“Where . . . appellants do not claim diversity of citizen-
ship, there must be federal question jurisdiction.” Semi-
conductor Energy Lab. Co. v. Nagata, 706 F.3d 1365, 1369
(Fed. Cir. 2013); ExcelStor Tech., Inc. v. Papst Licensing
GmbH & Co. KG, 541 F.3d 1373, 1375 (Fed. Cir. 2008).
No claim of diversity was made here.
NEUROREPAIR, INC. v. THE NATH LAW GROUP                        5



Congress relating to patents.” 28 U.S.C. § 1338(a). 2 In
Christianson v. Colt Industries Operating Corp., the
Supreme Court held a claim may “aris[e] under” the
patent laws even where patent law did not create the
cause of action, provided the “well-pleaded complaint
establishes . . . that the plaintiff’s right to relief necessari-
ly depends on resolution of a substantial question of
federal patent law.” 486 U.S. 800, 808–09 (1988).
    In its recent decision in Gunn v. Minton, the Court
made clear that state law legal malpractice claims will
“rarely, if ever, arise under federal patent law,” even if
they require resolution of a substantive question of feder-
al patent law. 133 S. Ct. at 1065. The Court reasoned
that while such claims “may necessarily raise disputed
questions of patent law,” those questions are “not sub-
stantial in the relevant sense.” Id. at 1065, 1066. The
Court emphasized that “[b]ecause of the backward-looking
nature of a legal malpractice claim, the question is posed
in a merely hypothetical sense” and that “[n]o 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.” Id. at 1066–67. In view of the
absence of a question that was “significant to the federal
system as a whole” and the “‘especially great’” state
interest in regulating lawyers, the Court concluded that



    2   The second sentence of § 1338(a) was amended by
the Leahy–Smith America Invents Act, Pub. L. No. 112-
29, § 19(a), 125 Stat. 284, 331 (2011) (“AIA”). Neu-
roRepair commenced this action before these amendments
took effect on September 16, 2011, so this court applies
the pre-AIA version of the statute. AIA § 19(e), 125 Stat.
at 333; see also Wawrzynski v. H.J. Heinz Co., 728 F.3d
1374, 1378 (Fed. Cir. 2013) (actions commenced before
September 16, 2011, are not subject to the AIA amend-
ments).
6                NEUROREPAIR, INC. v. THE NATH LAW GROUP



Congress had not intended to bar state courts from decid-
ing state legal malpractice claims simply because they
may involve an underlying hypothetical patent issue. See
id. at 1066, 1068 (quoting Goldfarb v. Va. State Bar, 421
U.S. 773, 792 (1975)).
    The Court in Gunn explained that its earlier decision
in Grable & Sons Metal Products, Inc. v. Darue Engineer-
ing & Manufacturing, 545 U.S. 308 (2005), is properly
viewed as setting forth a four-part test to determine when
federal jurisdiction over a state law claim will lie. Gunn,
133 S. Ct. at 1065. Under this test, a cause of action
created by state law may nevertheless “arise under”
federal patent law within the meaning of 28 U.S.C.
§ 1338(a) if it involves a patent law issue that is “(1)
necessarily raised, (2) actually disputed, (3) substantial,
and (4) capable of resolution in federal court without
disrupting the federal-state balance approved by Con-
gress.” Id. Although the events in the present matter
transpired prior to the decision in Gunn, the Supreme
Court’s interpretation of federal civil law “must be given
full retroactive effect in all cases still open on direct
review and as to all events, regardless of whether such
events predate or postdate [the Supreme Court’s] an-
nouncement of the rule.” Harper v. Va. Dep’t of Taxation,
509 U.S. 86, 97 (1993).
      A.   NeuroRepair’s suit would not “necessarily
               raise” issues of patent law
    NeuroRepair’s suit fails Gunn’s jurisdictional test. An
issue of patent law is “necessarily raised” if “a well-
pleaded complaint establishes either that federal patent
law creates the cause of action or that the plaintiff's right
to relief necessarily depends on resolution of a substantial
question of federal patent law, in that patent law is a
necessary element of one of the well-pleaded claims.”
Christianson, 486 U.S. at 809; see also Grable, 545 U.S. at
315 (finding a federal issue to be an “essential element” of
NEUROREPAIR, INC. v. THE NATH LAW GROUP                      7



the cause of action); Gunn, 133 S. Ct. at 1065 (noting the
plaintiff’s required showing in order to prevail “will
necessarily require application of patent law to the facts
of [his] case”). NeuroRepair’s claims of professional
negligence, breach of fiduciary duty, breach of written
contract, breach of oral contract, breach of implied cove-
nant of good faith and fair dealing, negligent misrepre-
sentation, and false promise are each created by state, not
federal, law. See J.A. 62–68. Therefore, a patent law
issue will be necessarily raised only if it is a necessary
element of one of the well-pleaded claims.
     NeuroRepair’s state law claims, as presented in its
complaint of March 20, 2009, include a number of refer-
ences to patent issues. For example, its First Cause of
Action for professional negligence asserts Defendants
breached their duty of care “by, among other things,
failing to communicate with Plaintiff . . . ; failing to com-
petently and effectively pursue the Patent Applica-
tions; . . . [and] failing to accurately record and bill time.”
J.A. 63.
    However, because NeuroRepair’s complaint sets forth
multiple bases in support of its allegation of professional
negligence, a court could find NeuroRepair is entitled to
relief based on this allegation without ever reaching a
patent law issue. See Immunocept, LLC v. Fulbright &
Jaworski, LLP, 504 F.3d 1281, 1285 (Fed. Cir. 2007)
(“Because it is the sole basis of negligence, the claim
drafting error is a necessary element of the malpractice
cause of action.”). Therefore, it would not “necessarily
require the application of patent law to the facts of [this]
case” for NeuroRepair “to prevail on [its] legal malpractice
claim.” Gunn, 133 S. Ct. at 1065; see also Christianson,
486 U.S. at 812 (“Since there are reasons completely
unrelated to the provisions and purposes of federal patent
law why petitioners may or may not be entitled to the
relief [they] see[k] . . . , the claim does not ‘arise under’
federal patent law.”) (internal quotation marks and
8                NEUROREPAIR, INC. v. THE NATH LAW GROUP



citation omitted); Dixon v. Coburg Dairy, Inc., 369 F.3d
811, 816 (4th Cir. 2004) (en banc) (“A plaintiff’s right to
relief for a given claim necessarily depends on a question
of federal law only when every legal theory supporting the
claim requires the resolution of a federal issue.”). Simi-
larly, NeuroRepair could prevail on its remaining six
causes of action under alternate bases that do not neces-
sarily implicate an issue of substantive patent law.
     B. At least one patent law issue is actually dis-
                         puted
    Although a court would not necessarily be required to
reach the patent law issues that underlie the causes of
action alleged by NeuroRepair, at least one patent law
issue is actually disputed by the parties. NeuroRepair
claims Defendants’ wrongdoing hindered its ability to
timely obtain patents of the same scope it would have
obtained but for Defendants’ delay and mishandling.
Defendants counter that the patent did not issue sooner
because the claims as initially presented were not patent-
able and that Defendants had not narrowed the claims
because “NeuroRepair had expressly ordered [Defendants]
not to.” Appellees’ Br. 26. Whether the patent could have
issued earlier and with broader claims is thus actually
disputed by the parties.
    C.   The patent issue in NeuroRepair’s suit is not
                      “substantial”
    Even if the disposition of this matter necessarily re-
quired the resolution of patent law issues, those issues
would not be of sufficient importance “to the federal
system as a whole,” as required under the third part of
the Gunn test. 133 S. Ct. at 1066, 1068. “[I]t is not
enough that the federal issue be significant to the particu-
lar parties in the immediate suit; that will always be true
when the state claim ‘necessarily raise[s]’ a disputed
federal issue . . . .” Id. at 1066.
NEUROREPAIR, INC. v. THE NATH LAW GROUP                     9



    The Supreme Court has described three nonexclusive
factors that may help to inform the substantiality inquiry,
none of which is necessarily controlling. See MDS (Can.)
Inc. v. Rad Source Techs., Inc., 720 F.3d 833, 842 (11th
Cir. 2013); see also Mikulski v. Centerior Energy Corp.,
501 F.3d 555, 570 (6th Cir. 2007). First, a substantial
federal issue is more likely to be present if a “pure issue of
[federal] law” is “dispositive of the case.”          Empire
Healthchoice Assurance, Inc. v. McVeigh, 547 U.S. 677,
700 (2006). Second, a substantial federal issue is more
likely to be present if the court’s resolution of the issue
will control “numerous other cases.” Id. Third, a sub-
stantial federal issue is more likely to be present if “[t]he
Government . . . has a direct interest in the availability of
a federal forum to vindicate its own administrative ac-
tion.” Grable, 545 U.S. at 315.
      i.   No pure issue of federal law is dispositive
    NeuroRepair asserts Defendants’ wrongdoing caused
harm by, among other things, hindering its ability both to
pursue the patent applications in a timely and effective
manner and to obtain patents of the same scope it would
have obtained but for Defendants’ delay and mishandling.
Although resolution of these assertions could involve the
application of substantive patent law principles, it is not
clear from the record that any particular substantive
patent law issue or issues would need to be resolved.
Both claim scope and timing of issuance are likely to
depend primarily on the particular facts and circumstanc-
es of the prior art, timely responses to office actions, etc.,
rather than on the interpretation of federal law. This is
therefore unlike cases where a distinct issue of federal
law was dispositive of the case. See, e.g., Gunn, 133 S. Ct.
at 1065, 1066 (finding the viability of an experimental-use
argument to be actually disputed and central to resolution
of the case, but concluding this issue was not substantial
in the relevant sense); Grable, 545 U.S. at 311 (noting the
underlying dispute centered on whether 26 U.S.C. § 6335
10                NEUROREPAIR, INC. v. THE NATH LAW GROUP



required personal service rather than service by mail);
Jang v. Bos. Scientific Corp., 767 F.3d 1334, 1336 (Fed.
Cir. 2014) (noting “Jang’s right to relief . . . depends on . . .
whether the stents sold by [petitioners] would have in-
fringed [Jang’s patents]”). Instead, the present matter
involves a question of federal law, at most, as only one of
several elements needed to prevail.                See Empire
HealthChoice, 547 U.S. at 701 (“[I]t takes more than a
federal element to open the ‘arising under’ door.”) (inter-
nal quotation marks and citation omitted); see also Mikul-
ski, 501 F.3d at 571 (Even if the federal issue is resolved
in their favor, “plaintiffs must still prove the remaining
elements of fraudulent misrepresentation (such as intent)
or breach of contract (such as the existence of a con-
tract).”).
     In addition, NeuroRepair’s assertions with respect to
patent scope and timing do not constitute the totality and
perhaps not even the most significant part of the state
law causes of action included in its complaint. These
causes of action also include assertions of failure to com-
municate, overbilling, failure to accurately record time
billed, failure to deliver work product, and misrepresenta-
tion of Cogan’s expertise in neuroscience. Additional
factual issues are raised in the parties’ briefs, including
whether Cogan represented himself as a partner of The
Nath Law Group, whether he was in fact a partner,
whether Cogan deliberately overbilled NeuroRepair,
whether The Nath Law Group “deliberately concealed
from NeuroRepair the firm’s internal investigation of
Cogan,” Appellant’s Br. 14, when NeuroRepair became
aware of the basis for its suit, and when NeuroRepair
became aware of Cogan’s qualifications, Appellees’ Br. 40–
43. These and other factual issues related to Neu-
roRepair’s claims of Defendants’ professional conduct and
alleged actions or inactions make clear this case does not
present a “pure issue of law” that is “dispositive of the
case.”
NEUROREPAIR, INC. v. THE NATH LAW GROUP                     11



   ii. The court’s decision is unlikely to control numer-
                       ous other cases
    In arguing the resolution of the present matter will
affect “subsequent litigation,” id. at 26, Appellees suggest
that if a state court adjudicates this case, “a third-party
infringer could conceivably be found liable for infringing a
patent that its own state court previously found to be
unpatentable,” id. at 27–28. This argument is unpersua-
sive. If a federal court finds a defendant liable for infring-
ing a valid patent notwithstanding a prior state court
determination of invalidity, it is self-evident the state
court decision did not “control” the later federal court
case.
    Moreover, to the extent a state court must address is-
sues of substantive patent law, the court is likely to focus
on whether the invention was patentable as initially
claimed, as reflected in the assertions of Appellees them-
selves. See id. at 26 (arguing “the claims as initially
presented were not patentable”) (emphasis added). Any
determination of validity of claims that ultimately did not
issue constitutes a hypothetical matter that would not
affect the scope of any live patent. See Byrne v. Wood,
Herron & Evans, LLP, 676 F.3d 1024, 1032 n.4 (Fed. Cir.
2012) (O’Malley, J., dissenting from the denial of the
petition for rehearing en banc) (stating, in the context of a
patent prosecution malpractice claim, “the patent issue in
any malpractice action will involve only an academic
inquiry into what likely would have happened absent the
attorney negligence, and the answer will affect only the
result of the state law claim, not the rights or scope of any
live patent”). If the state court action would neither affect
the scope of any live patent nor require resolution of a
novel issue of patent law, it is unclear how it could control
numerous other cases or impact the federal system as a
whole.
12                NEUROREPAIR, INC. v. THE NATH LAW GROUP



     iii. The government does not have a direct interest
         in the availability of a federal forum to vindicate
                   its own administrative action
    “[Q]uestions of [federal] jurisdiction over state-law
claims require careful judgments about the nature of the
federal interest at stake.” Grable, 545 U.S. at 317 (inter-
nal quotation marks and citation omitted). Grable in-
volved a dispute over title to real property, a
quintessential state law matter. See Or. ex rel. State
Land Bd. v. Corvallis Sand & Gravel Co., 429 U.S. 363,
378 (1977) (“This Court has consistently held that state
law governs issues relating to . . . real property, unless
some other principle of federal law requires a different
result.”). The central issue, however, was whether the
Internal Revenue Service (“IRS”), in seizing Grable’s
property to satisfy a delinquent tax debt and later selling
the property to the defendant, had failed to notify Grable
“in the exact manner required by [26 U.S.C.] § 6335(a).”
Grable, 545 U.S. at 311. Resolution of the dispute re-
quired a determination of whether § 6335(a) required
personal service or allowed service to be made by certified
mail, id., a determination that would directly impact IRS
practices. In finding federal jurisdiction proper, the Court
noted the government’s “strong interest in the prompt and
certain collection of delinquent taxes,” and the importance
of ensuring the IRS could “satisfy its claims from the
property of delinquents.” Id. at 315 (internal quotation
marks omitted). Given these considerations, the govern-
ment had “a direct interest in the availability of a federal
forum to vindicate its own administrative action.” Id.
    The federal interest asserted to be at stake in the pre-
sent matter is far more nebulous than in Grable. Appel-
lees assert state court jurisdiction “would be a recipe for
inconsistency,” Appellees’ Br. 28, and “[i]f state courts
start ruling on issues of this nature, subsequent patent
prosecutions and litigation arising out of those patents
will be difficult, to say the least,” id. at 26. These vague
NEUROREPAIR, INC. v. THE NATH LAW GROUP                   13



assertions, which do not contain citations to authority, do
not convincingly establish the USPTO or any other gov-
ernment agency has a “direct interest” in the outcome of
this dispute, which is between private parties and relates
to alleged legal malpractice and other state law claims.
Grable, 545 U.S. at 315.
     D. If cases such as NeuroRepair’s were heard in
      federal court, it would disrupt the federal-state
                           balance
    Finally, to the extent federal interests are implicated
by NeuroRepair’s state law claims, they do not outweigh
the “especially great” interests of the state in regulating
that state’s lawyers. See Gunn, 133 S. Ct. at 1068. Since
Gunn, courts considering alleged violations of a variety of
state laws have declined to find federal question jurisdic-
tion notwithstanding the presence of an underlying issue
of patent law. See, e.g., Forrester Envtl. Servs. Inc. v.
Wheelabrator Techs., Inc., 715 F.3d 1329 (Fed. Cir. 2013)
(tortious interference with a contractual relationship);
MDS (Can.), 720 F.3d at 842 (breach of contract);
Mirowski Family Ventures, LLC v. Bos. Scientific Corp.,
958 F. Supp. 2d 1009 (S.D. Ind. 2013) (breach of patent
license agreement); Airwatch LLC v. Good Tech. Corp.,
No. 1:13-cv-2870-WSD, 2014 WL 1651964 (N.D. Ga. Apr.
24, 2014) (defamation); Bonnafant v. Chico’s FAS, Inc.,
No. 2:13-cv-893-FtM-29CM, 2014 WL 1664554 (M.D. Fla.
Apr. 25, 2014) (state whistleblower legislation).
    In sum, federal jurisdiction is lacking here under
Gunn because no federal issue is necessarily raised,
because any federal issues raised are not substantial in
the relevant sense, and because the resolution by federal
courts of attorney malpractice claims that do not raise
substantial issues of federal law would usurp the im-
portant role of state courts in regulating the practice of
law within their boundaries, disrupting the federal-state
balance approved by Congress.
14               NEUROREPAIR, INC. v. THE NATH LAW GROUP



     III. Defendants have not effectively distinguished
                          Gunn
     Defendants seek to distinguish Gunn on the basis
that it involved alleged malpractice within the patent
litigation context while the present matter involves
alleged malpractice within the patent prosecution context.
Gunn made no such distinction. See 133 S. Ct. at 1066–67
(“Because of the backward-looking nature of a legal
malpractice claim, the question is posed in a merely
hypothetical sense.”) (emphasis added); id. at 1065
(“[S]tate legal malpractice claims based on underlying
patent matters will rarely, if ever, arise under federal
patent law . . . .”) (emphasis added). Accepting Defend-
ants’ invitation to carve out a broad exception for patent
prosecution malpractice would conflict with the Supreme
Court’s description of such exceptions as comprising a
“slim category.”        Id. at 1065; see also Empire
HealthChoice, 547 U.S. at 699 (describing exceptions to
this rule as a “special and small category”). The number
of patent-related malpractice cases considered by the
Federal Circuit demonstrates that such cases have not
been rare. See, e.g., Byrne, 676 F.3d at 1037 (O’Malley, J.,
dissenting).
    Defendants further attempt to distinguish Gunn by
arguing that NeuroRepair’s patents were undergoing
prosecution at the time of the litigation, and so any court
decision with respect to the malpractice claim could have
a real-world result and would not be backward-looking.
However, as already explained, the outcome of this dis-
pute is not likely to control numerous other cases. See
supra Part II.C.ii. In addition, the Gunn Court consid-
ered and rejected the argument that “state courts’ an-
swers to hypothetical patent questions can sometimes
have real-world,” forward-looking effects, such as where a
state court’s interpretation of claim scope impacts a
USPTO examiner’s later consideration of a continuation
application related to the earlier-litigated patent. 133 S.
NEUROREPAIR, INC. v. THE NATH LAW GROUP                15



Ct. at 1067. In rejecting this argument, the Court ex-
pressed doubt that an examiner would be bound by a
state court’s interpretation, and found in any event such
effects would be “‘fact-bound and situation-specific’” and
any forward-looking results would be limited to the par-
ties and patents that had been before the state court. Id.
at 1068 (quoting Empire HealthChoice, 547 U.S. at 701).
Similarly, it noted that “federal courts are of course not
bound by state court case-within-a-case patent rulings.”
Gunn, 133 S. Ct. at 1067.
    Addressing what would have happened had the al-
leged bad acts of Defendants not occurred requires a court
to engage in precisely the sort of backward-looking, hypo-
thetical analysis contemplated in Gunn. Exercise of
federal jurisdiction is therefore improper.
                      CONCLUSION
   For these reasons, this court
  VACATES AND REMANDS TO THE DISTRICT
 COURT WITH INSTRUCTIONS TO REMAND THE
    CASE TO CALIFORNIA STATE COURT
