Summary: CAFC did not have jurisdiction in patent ownership case where ownership did not require resolution of any issues of patent law.

Case: Krauser v. Biohorizons, Inc., No. 2013-1461 (Fed. Cir. June 4, 2014) (precedential). On appeal from S.D. Fla. Before Lourie, Clevenger and Dyk.

Procedural Posture: Plaintiff appealed district court’s finding of no ownership rights to a dental implant system patent to the Eleventh Circuit, which transferred the case to the CAFC. CAFC held it did not have jurisdiction and transferred the appeal back to the Eleventh Circuit.

  • Declaratory Judgment/Appellate Jurisdiction: While the appellant’s original complaint included inventorship claims arising under federal patent law subjecting it to § 1338(a) jurisdiction, the complaint was subsequently amended withdrawing without prejudice the inventorship claims, which deprives the CAFC of jurisdiction.
  • Patent Ownership: The CAFC rejected the argument that adjudication of appellant’s ownership claims would require resolution of inventorship and found that issues of ownership do not necessarily require consideration of patent law inventorship. Since the question of ownership rested on state contract law or quantum meruit theories, no federal question was raised, and the CAFC lacked jurisdiction.
  • Preemption: The CAFC rejected the argument that there is federal jurisdiction because plaintiff sought remedies that are preempted by federal patent law, finding that federal preemption is ordinarily only a defense to the plaintiff’s suit, and does not authorize removal to federal court.

Aryn Conrad