Clearplay, Inc. v. Max Abecassis & Nissim Corp., No. 2009-1471 (Fed. Cir. Apr. 21, 2010).

The parties had settled a previous patent infringement dispute by entering into a license agreement. The parties disagreed as to the scope of the license, and the licensee allegedly informed third parties that the licensor was violating the patent. The licensor sued on various state law claims including breach of the license agreement and tortuous interference with contractual relationships. The district court preliminarily enjoined the licensor, and the licensor appealed the preliminary injunction. The Federal Circuit did not have appellate jurisdiction and transferred the case to the Eleventh Circuit.

The Federal Circuit has jurisdiction over appeals of cases within the district court’s jurisdiction over patent cases in 28 U.S.C. § 1338. Under Section 1338, district courts have original jurisdiction of “any civil action arising under any Act of Congress relating to patents.” This patent jurisdiction extends “only to those cases in which a well-pleaded complaint establishes either [1] that the federal patent law creates the cause of action or [2] that the plaintiff’s right to relief necessarily depends on the resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.” “[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.” In this case, the complaint did not arise under federal patent law because the complaint was entirely devoted to state law causes of action.

A copy of the opinion can be found here.