In finding it had no jurisdiction in the licensing case involved in CLEARPLAY v. MAX ABECASSIS and NISSIM CORP, the CAFC quoted the Supreme Court in Christianson:
“a claim supported by alternative theories in the complaint may not form the basis for § 1338(a) jurisdiction
unless patent law is essential to each of those theories.” Id. We have consistently
applied those governing principles to determine whether particular claims, including
state law claims, can be said to arise under section 1338. See, e.g., Davis v. Brouse
McDowell, L.P.A., 596 F.3d 1355, 1359-62 (Fed. Cir. 2010); Thompson v. Microsoft
Corp., 471 F.3d 1288, 1291-92 (Fed. Cir. 2006); Uroplasty, Inc. v. Advanced
Uroscience, Inc., 239 F.3d 1277, 1279-80 (Fed. Cir. 2001); Hunter Douglas, Inc. v.
Harmonic Design, Inc. 153 F.3d 1318, 1325, 1328-29 (Fed. Cir. 1998).
The bottom line:
The first part of the Christianson test is plainly not satisfied in this case.
ClearPlay’s second amended complaint, which was before the court when the
preliminary injunction order was entered and appealed from, is entirely devoted to state
law causes of action. Thus, federal patent law does not “create[] the cause of action” as
to any of the claims in the complaint.
AND
In sum, we have no jurisdiction over this appeal. Because it appears that the
district court had jurisdiction over this case based on diversity of citizenship, and
because an appeal to the Eleventh Circuit would have been proper when the appeal
was taken to this court, we conclude that it is in the interest of justice to transfer the
case to the Eleventh Circuit. See 28 U.S.C. § 1631.
If one wants to see "what can go wrong" in licensing,
the text of the CAFC decision is a good read.
Cross-reference:
Christianson v. Colt Industries Operating Corp., 486 U.S. 800 (1988)
http://ipbiz.blogspot.com/2008/09/no-federal-jurisdiction-for-licensee.html
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