Thursday, May 16, 2013

Gunn relied upon in Forrester v. Wheelabrator; case goes to state court

From Forrester v. Wheelabrator

As to removal:

Under 28 U.S.C. § 1441(a), 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.” 28 U.S.C. § 1441(a). As
we stated in Jim Arnold Corp. v. Hydrotech System, Inc.:
The question we must answer . . . is whether federal
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 determine
the cause.
109 F.3d 1567, 1571 (Fed. Cir. 1997).

Colt is cited, followed by a cite to Gunn:

In Christianson
v. Colt Industries Operating Corp., the Supreme Court
held that a claim may “aris[e] under” the patent laws
even where patent law did not create the cause of action,
provided that the “well-pleaded complaint establishes . . .
that the plaintiff’s right to relief necessarily depends on
resolution of a substantial question of federal patent law.”
486 U.S. 800, 808–09 (1988). Thus, even a cause of action
created by state law may “aris[e] under” federal patent
law within the meaning of 28 U.S.C. § 1338 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 Congress.” Gunn v. Minton, 568
U.S. ___, ___, 133 S. Ct. 1059, 1065 (2013).2
In its recent decision in Gunn v. Minton, the Supreme
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
federal patent law. 568 U.S. at ___, 133 S. Ct. at 1065,
1067. The Court reasoned that while such claims may
“necessarily raise disputed questions of patent law,” those
questions are “not substantial in the relevant sense.” Id.
at 1065–66. 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–

Within a footnote:

And in Christianson and
Gunn, the Supreme Court made clear that the same test
applies whether the district court’s potential jurisdiction
is premised on section 1331 or section 1338. Christianson,
486 U.S. at 808–09; Gunn, 568 U.S. at ___, 133 S. Ct.
at 1064.

Of Additive Controls:

In the past, we have concluded that similar state law
claims premised on allegedly false statements about
patents raised a substantial question of federal patent
law. For example, in Additive Controls & Measurement
Systems, Inc. v. Flowdata, Inc., we concluded that the
plaintiff’s state law business disparagement claims arose
under patent law for the purposes of 28 U.S.C. § 1338.
986 F.2d 476, 478 (Fed. Cir. 1993). We noted that under
state law, “a business disparagement claim requires [the]
plaintiff to prove . . . the falsity of [the] defendant’s allegedly
disparaging statements.” Id. There, the allegedly
disparaging statement was an accusation of patent infringement;
thus, we concluded that in order to prove the
falsity of that statement, the plaintiff would have to
“show that its product does not infringe the . . . patent.”
Id. Reasoning that the infringement issue presented a
substantial question of patent law, we concluded that the
claims arose under federal patent law for the purposes of
§ 1338. Id. at 478–79. Similarly in Hunter Douglas, Inc.
v. Harmonic Design, Inc., the plaintiff asserted a claim for
“injurious falsehood” on the theory that the defendant
falsely claimed to “hold exclusive rights to make or sell
window shades covered by one or more” patents. 153 F.3d
1318, 1329 (Fed. Cir. 1998)

In this case, Gunn controls:

In sum, we conclude that even if the allegations contained
in Forrester’s complaint necessarily raise a question
of patent law, the patent law issues are not
“substantial in the relevant sense” under Gunn. See 568
U.S. at ___, 133 S. Ct. at 1066.6 Because the district court
lacked subject-matter jurisdiction over Forrester’s claims,
we vacate the district court’s judgment and remand to the
district court. On remand from this court, the district
court shall remand the case to New Hampshire state


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