CAFC discusses Vornado and Christianson
In March 2010, apparently unsatisfied with Marmo’s efforts to manufacture and sell his invention, DeRosa filed the underlying complaint in Virginia state court. The thrust of that complaint was as follows:
[T]he failure by [Marmo] to abide by its contractual and financial obligations under the contract have denied [DeRosa] the bargained for benefit thereof, that is steady flow of manufacturing business and the timely payment for the product by [Marmo] which may be remedied only by rescission or cancellation of the contract and the restoration of ownership of the patent rights in [DeRosa’s] intellectual property, his invention, the DeRosa Chuck.
The CAFC cited Vornado:
The Supreme Court has explained that in order for this court to have appellate jurisdiction over a patent infringement case, the case must have arisen under the patent laws such that the plaintiff's well- pleaded complaint must “establis[h] 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....” Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826, 830 (2002); see also 28 U.S.C. §§ 1295(a)(1) and 1338.
Causes of action based on contractual rights in a pat- ent assignment or license agreement as a general rule do not arise under the patent laws. See Luckett v. Delpark, Inc., 270 U.S. 496, 502-03 (1926); New Marshall Engine Co. v. Marshall Engine Co., 223 U.S. 473 (1912). Marmo nonetheless argues that the appeal is properly before this court because the complaint specifically requests a resto- ration of ownership in patent rights.
Note that it was the assignee-appellant (Marmo) who sought CAFC jurisdiction.
In Jim Arnold Corp. v. Hydrotech Systems, Inc., 109 F.3d 1567 (Fed. Cir. 1997), a case very similar to this one, this court held that a plaintiff seeking rescission of a patent assignment agreement in order to restore ownership rights in a patent could not meet the jurisdictional test set forth in Christianson. As in the present case, the plaintiff in Jim Arnold had no rights in the patent with- out judicial intervention and was thus left only to argue that ownership of the patents should be restored based upon a breach of contract claim. Because a plaintiff under such circumstances could at best only present a frivolous allegation of ownership of the patents at issue sufficient to confer jurisdiction under section 1338, we transferred the case to the regional circuit. Since the same outcome is warranted here, pursuant to 28 U.S.C. § 1631, we transfer the case to the Fourth Circuit.
**See also National Pasteurized Eggs v. Davidson :
Fed. R. App. P. 3(d)(1) states that the clerk of the district court "must promptly send a copy of the notice of appeal and of the docket entries .,. to the clerk of the court of appeals named in the notice."