United States Court of Appeals for the Federal Circuit
04-1452
BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM,
on behalf of THE UNIVERSITY OF TEXAS AT AUSTIN,
and HYDRO-QUEBEC,
Plaintiffs-Appellees,
v.
NIPPON TELEPHONE AND TELEGRAPH CORPORATION,
Defendant-Appellant.
James S. Renard, Bickel & Brewer, of Dallas, Texas, argued for plaintiffs-
appellees. With him on the brief were William A. Brewer III, Joyce M. Hellstern, and
Garreth A. Sarosi. Of counsel was Daniel F. Perez.
Gerald C. Conley, Andrews Kurth LLP, of Dallas, Texas, argued for defendant-
appellant. Of counsel on the brief were Timothy E. Taylor, Bernard H. Masters, and
Tonya M. Gray. Also of counsel on the brief were Kendall M. Gray and Anthony F.
Matheny, of Houston, Texas.
Appealed from: United States District Court for the Western District of Texas
Judge Sam Sparks
United States Court of Appeals for the Federal Circuit
04-1452
BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM,
on behalf of THE UNIVERSITY OF TEXAS AT AUSTIN,
and HYDRO-QUEBEC,
Plaintiffs-Appellees,
v.
NIPPON TELEPHONE AND TELEGRAPH CORPORATION,
Defendant-Appellant.
_______________________
DECIDED: July 13, 2005
_______________________
Before SCHALL, GAJARSA, and LINN, Circuit Judges.
GAJARSA, Circuit Judge.
Nippon Telephone and Telegraph Corporation ("NTT") appeals from an order by
the United States District Court for the Western District of Texas denying NTT's motion
to dismiss a suit filed by the Board of Regents of the University of Texas System ("UT")
and Hydro-Quebec ("HQ"). Bd. of Regents, Univ. of Tex. Sys. v. Nippon Tel. & Tel.
Corp., Case No. A-01-CA-478 (W.D. Tex. June 1, 2004) (the "Order"). The Order
denied NTT's motion to dismiss on grounds of sovereign immunity, a decision that NTT
asserts is appealable under the "collateral order" doctrine established by Cohen v.
Beneficial Industrial Loan Corp., 337 U.S. 541 (1949). Because we conclude that this
case does not fall within the jurisdiction of this court, we fail to reach the issue as to
whether the Order is appealable. Accordingly, pursuant to 28 U.S.C. § 1631, we
transfer NTT's appeal to the United States Court of Appeals for the Fifth Circuit for
resolution of the issues raised therein.
I. BACKGROUND
NTT is the largest telecommunications company in Japan. NTT was created in
1985 when the telecommunications industry was privatized and its predecessor, Nippon
Telegraph and Telephone Public Corporation, was dissolved.
In October 1993, NTT and UT entered into an agreement whereby an NTT
scientist was given permission to work for one year as a visiting scientist in UT's Center
for Materials Science and Engineering. During his tenure, the NTT scientist worked with
Dr. John B. Goodenough, a UT professor and an expert in lithium phosphate cathode
materials designed primarily for use in rechargeable batteries. According to the terms
of the agreement between NTT and UT, "any information, ideas, discoveries,
applications, research, inventions, and work product generated by the [NTT] scientist,
directly or indirectly, or with which he became familiar as a result of his stay, were the
exclusive property of [UT]."
While at UT, the NTT scientist was involved in research on a compound to be
used as cathodes in high-performance batteries. In 1996, UT filed for United States
patent protection on the product of this research which it identified in its application as
"cathode materials for secondary (rechargeable) Lithium batteries," commonly referred
to as LiFePO4. In 1999, UT obtained U.S. Patent No. 5,910,382 ("the '382 patent")
covering its LiFePO4 invention. In January 1997, while the application for the '382
04-1452 2
patent was pending, UT entered into a licensing agreement giving HQ exclusive rights
to make and use LiFePO4.
According to UT, in November 1995, the NTT scientist and NTT applied for
Japanese patent protection based on the research into LiFePO4 that the NTT scientist
was exposed to while at UT. UT asserts that such use of its confidential and proprietary
technology was a misappropriation of UT's intellectual property and constituted a breach
of the agreement by which the NTT scientist was given access to that proprietary
information.
On June 15, 2001, UT and HQ (collectively, "Plaintiffs") filed suit against NTT in
the 126th Judicial District Court of Travis County, Texas. Plaintiffs' complaint (the
"Complaint") asserted state law claims for breach of confidential relationship,
conversion, breach of contract, statutory and common law misappropriation of trade
secrets, breach of fiduciary duty, tortious interference, unfair competition, and civil
conspiracy.* The relief sought in the Complaint included actual damages, punitive
*
Plaintiffs subsequently filed three amended complaints, which included
varying combinations of an additional state law claim for business disparagement and a
claim for violation of the Lanham Act. As NTT correctly points out, these additional
claims are not for our consideration as we resolve the primary issue before us, namely
whether NTT's subsequent removal of the action to federal court was proper. It is only
the pleading operative at the time the petition to remove was filed, i.e., the Complaint,
that is relevant to determining NTT's right to remove. Pullman Co. v. Jenkins, 305 U.S.
534, 537 (1939). Because Plaintiffs have contested the propriety of NTT's removal prior
to entry of final judgment, this case is distinguishable from the line of cases considering
only whether federal jurisdiction is proper. See Pegram v. Herdrich, 530 U.S. 211, 215-
16 (2000) (distinguishing questions of jurisdiction raised after entry of final judgment
from uncontested issues related to the propriety of removal); Grubbs v. Gen. Elec.
Credit Corp., 405 U.S. 699, 700 (1972) (holding that a challenge to the validity of the
removal procedure may not be raised for the first time on appeal); Mackay v. Uinta Dev.
Co., 229 U.S. 173, 176 (1913) (holding that a plaintiff who failed to challenge removal
procedures prior to entry of final judgment effectively waived the right to claim that
04-1452 3
damages, attorneys' fees under state law, disgorgement of profits collected by NTT in
relation to the UT technology and a constructive trust over the Japanese patent for the
benefit of UT. The Complaint also sought a permanent injunction ordering NTT to turn
over all materials containing any purloined proprietary information and to refrain from
using or disseminating any such information or engaging in any conduct that interferes
with Plaintiffs' business relationships.
On July 23, 2001, NTT filed a notice to remove the case to the United States
District Court for the Western District of Texas. NTT initially sought removal of the case
on the basis of 28 U.S.C. § 1331, which grants district courts original jurisdiction over
questions arising under federal law, and 28 U.S.C. § 1338(a), which grants district
courts original jurisdiction over civil actions arising under U.S. patent laws. On October
15, 2001, NTT filed a Supplemental Notice of Removal that asserted as an additional
basis for removal 28 U.S.C. § 1330, which grants district courts original jurisdiction over
civil actions against a foreign state. Plaintiffs filed a motion to remand the case to state
court.
On November 26, 2001, the district court issued an order denying the motion to
remand on the grounds that it had jurisdiction under 28 U.S.C. § 1338(a). In so holding,
the court found that Plaintiffs' claim for tortious interference with business opportunity
required UT to "show that the '382 patent overlaps the subject matter of NTT's
Japanese patent. This requires an interpretation of the '382 patent, which is a
substantial question of federal law." Citing U.S. Valves, Inc. v. Dray, 212 F.3d 1368,
1372 (Fed. Cir. 2000), and Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d
irregularities in the removal process deprived the court of jurisdiction over a case
otherwise properly before it).
04-1452 4
1318, 1325 (Fed. Cir. 1998), overruled in part on other grounds by Midwest Indus., Inc.
v. Karavan Trailers, Inc., 175 F.3d 1356, 1361 (Fed. Cir. 1999), the court determined
that it had jurisdiction under 28 U.S.C. § 1338(a), because there was no theory by which
Plaintiffs' claim for tortious interference could be established that would not implicate
federal patent law. Because the court found that it had jurisdiction over one of Plaintiffs'
state law claims, it determined that it had supplemental jurisdiction to hear Plaintiffs'
other claims pursuant to 28 U.S.C. § 1367. In its November 26, 2001 order, the district
court also denied NTT leave to supplement its removal notice to include 28 U.S.C.
§ 1330 as a basis for jurisdiction on the ground that NTT had not shown cause for failing
to comply with the timing requirement of 28 U.S.C. § 1446(b).
On March 26, 2004, nearly three years after removing the case, NTT filed a
motion to dismiss on the ground of sovereign immunity. On June 1, 2004, the district
court concluded that NTT is not entitled to foreign sovereign status and therefore not
entitled to sovereign immunity under the Foreign Sovereign Immunities Act ("FSIA"),
28 U.S.C. § 1602 et seq. Accordingly, the court denied NTT's motion to dismiss. It is
from the court's June 1, 2004 order that NTT appeals.
On July 16, 2004, UT and HQ filed a motion to dismiss NTT's appeal for lack of
jurisdiction. A single judge of this court denied that motion without prejudice stating that
"[w]e deem the better course is to have the parties address this issue in their briefs."
Bd. of Regents, Univ. of Tex. Sys. v. Nippon Tel. & Tel. Corp. 04-1452 (Fed. Cir. Aug.
16, 2004). The issue of this court's jurisdiction over NTT's appeal is now squarely
before us.
04-1452 5
II. DISCUSSION
NTT seeks to invoke this court's jurisdiction under the terms of 28 U.S.C.
§ 1295(a)(1), which enables this court to hear appeals from a district court "if the
jurisdiction of that court was based, in whole or in part, on section 1338 of this title."
The threshold issue to be resolved, then, is whether or not the district court properly
exercised jurisdiction over this case pursuant to 28 U.S.C. § 1338(a). This court's
review of jurisdictional determinations is plenary. Hunter Douglas, 153 F.3d at 1325.
A. Jurisdiction Under Section 1338(a)
According to the terms of the statute, jurisdiction exists under section 1338(a) if
an action "arises under" the federal patent laws. Therefore, jurisdiction extends "only to
those cases in which a well-pleaded complaint establishes 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 in that patent law is a
necessary element of one of the well-pleaded claims." Christianson v. Colt, 486 U.S.
800, 809 (1988). As we have stated, "[a] court must review and analyze the plaintiff's
pleadings, with special attention directed to the relief requested by the plaintiff, in
making the determination as to whether a cause of action arises under the patent laws."
Air Prod. & Chem., Inc. v. Reichhold Chem., Inc., 755 F.2d 1559, 1562 (Fed. Cir. 1985).
Here there is no question that the claims framed in the Complaint assert only
causes of action created by the state law of Texas and not the federal patent laws.
Accordingly, the issue becomes whether the state law claims asserted or the relief
requested by Plaintiffs "necessarily depends on resolution of a substantial question of
federal patent law." Christianson, 486 U.S. at 809.
04-1452 6
NTT identifies only one of Plaintiffs' state law claims that it argues requires the
resolution of substantial questions of patent law: the claim for tortious interference with
business opportunity and prospective economic advantage. Under Texas law, the
elements of tortious interference with prospective business relations are:
(1) a reasonable probability that the parties would have entered into a
contractual relationship; (2) an independently tortious or unlawful act by
the defendant that prevented the relationship from occurring; (3) the
defendant did the act with a conscious desire to prevent the relationship
from occurring or with knowledge that the interference was certain or
substantially certain to occur as a result of his conduct; and (4) the plaintiff
suffered actual harm or damage as a result of the interference.
Ash v. Hack Branch Distrib. Co., 54 S.W.3d 401, 414-15 (Tex. App. 2001). To satisfy
the second element, the plaintiff must prove that the defendant's conduct would be
actionable under an independent tort, but need not prove all the elements of the
independent tort. Wal-Mart Stores, Inc. v. Sturges, 52 S.W.3d 711, 726 (Tex. 2001).
Here Plaintiffs allege that NTT improperly took proprietary information belonging
to UT and adopted it as its own thereby interfering with Plaintiffs' expectations of
capitalizing on the inventions. Included in the Complaint is an exemplary list of the
economic opportunities allegedly interfered with by NTT: "(a) excluding others from
making, using, selling, offering for sale, or importing into the United States batteries of
the type disclosed in the '382 patent; (b) benefiting financially from licenses; and
(c) commercializing the technology."
NTT claims that in order for Plaintiffs to establish that they had the requisite
reasonable probability of a contractual relationship, substantial questions of U.S. patent
law would need to be resolved. First, according to NTT, Plaintiffs would have to show
that UT is the rightful inventor of LiFePO4 and owner of the '382 patent and that the '382
04-1452 7
patent is valid. Second, in order to claim that NTT's Japanese patent application
interfered with Plaintiffs' business expectancies, Plaintiffs would have to show that the
Japanese patent reads onto the '382 patent. Accordingly, NTT asserts that Plaintiffs'
tortious interference claim raises issues related to the inventorship, validity,
enforceability, and interpretation of the '382 patent. In support of its assertion, NTT
points to this court's precedent wherein the issues identified were deemed to present
substantial questions of patent law. Univ. of Colo. Found. v. Am. Cyanamid Co., 196
F.3d 1366, 1372 (Fed. Cir. 1999) (holding that plaintiffs' claim of equitable title to a U.S.
patent required determination of the rightful inventor of the patented technology, which
presented a substantial question of patent law); Hunter Douglas, 153 F.3d at 1329
(holding that plaintiff raised a substantial question of patent law by alleging that
defendants engaged in an injurious falsehood when the falsehood identified was that
defendants held exclusive rights to the patented invention; in order to prove its claims
plaintiff had to show that the subject patent was invalid); U.S. Valves, 212 F.3d at 1372
(holding that in order to succeed on its breach of contract action, the terms of the
contract required that plaintiff show that certain of defendant's products infringed its
patents; accordingly, patent law was a necessary element of plaintiff's breach of
contract action).
NTT correctly asserts that this court has held that issues of inventorship,
infringement, validity and enforceability present sufficiently substantial questions of
federal patent law to support jurisdiction under section 1338(a). Hunter Douglas,
153 F.3d at 1330-31. NTT is incorrect, however, in asserting that such issues are
raised by Plaintiffs' claim for tortious interference. This is so primarily because the
04-1452 8
patent law issues identified by NTT are not essential to the resolution of Plaintiffs' claim.
Contrary to NTT's assertion, Plaintiffs would not need to prove that the '382 patent is
valid in order to establish the business expectancy element of its well-pled tortious
interference claim. Issued patents are presumed valid absent proof to the contrary and
UT, as the patentee of the '382 patent, is entitled to the benefit of that presumption.
35 U.S.C. § 282; Speedco, Inc. v. Estes, 853 F.2d 909, 913 (Fed. Cir. 1988)
(determining that a plaintiff could rely on the statutory presumption of validity in
establishing an element of his well-pled contract claim). Similarly, a determination of
the true inventor of LiFePO4 may give rise to future claims regarding the validity of the
'382 patent, but the presence of a possible question of inventorship does not convert the
state law action into one arising under the patent laws. Consol. World Housewares, Inc.
v. Finkle, 831 F.2d 261, 265 (Fed. Cir. 1987) ("That a contract action may involve a
determination of the true inventor does not convert that action into one 'arising under'
the patent laws.").
NTT also asserts that the court is required to construe the '382 patent in order to
determine if NTT's conduct interfered with Plaintiffs' business opportunities. NTT's
argument relies heavily on our holding in U.S. Valves. That reliance is misplaced. In
U.S. Valves, Dray, the patentee, granted to U.S. Valves the exclusive right to
manufacture, use, sell, advertise and distribute the patented invention. 212 F.3d at
1370. After relations between the parties broke down, U.S. Valves sued Dray claiming
breach of contract due to his manufacture and sale of products allegedly covered by the
license agreement. Id. at 1371. We held that U.S. Valves' breach of contract action
raised substantial issues of patent law, because in order for U.S. Valves to succeed on
04-1452 9
its claim, it must first show that the valves sold by Dray were within the scope of the
subject patents. Id. at 1372. Although the court in U.S. Valves found that the breach of
contract action at issue required a determination as to whether the defendant's actions
infringed the subject patent, the case does not stand for the proposition that all breach
of contract actions involving patents require such a determination. NTT, however,
attempts to find broad meaning in the holding of U.S. Valves divorced from its factual
context. NTT analogizes to U.S. Valves and argues that Plaintiffs' claim for interference
with business opportunities related to the commercialization of the '382 patent requires
that Plaintiffs first show that NTT's Japanese patent overlaps with the '382 patent. To
the contrary, Texas law requires only that Plaintiffs establish that NTT's alleged conduct,
improperly claiming ownership of UT's proprietary technology by filing the Japanese
patent application, constituted an independent tort that prevented Plaintiffs from
entering into contracts. The construction and scope of the terms of the '382 patent are
irrelevant to showing that the technology on which the Japanese patent is based was
misappropriated from UT.
This case is very similar to two cases in which this court found that the state law
claims asserted did not "arise under" federal patent law. In American Telephone &
Telegraph Co. v. Integrated Network Corp., 972 F.2d 1321, 1322 (Fed. Cir. 1992),
American Telephone & Telegraph Co. ("AT&T") sued Integrated Network Corporation
("INC") and four of its employees alleging that the INC employees, while employed at
AT&T, had conceived of an invention that they had assigned to INC. Id. INC had
obtained a U.S. patent on the disputed invention. Id. In its suit, AT&T sought to obtain
title to the patent by asserting state law claims for breach of contract; breach of fiduciary
04-1452 10
duty; misuse and misappropriation of proprietary information; and inducing breach of
contract and misuse and misappropriation of proprietary information. Id. We
determined that all four counts of AT&T's complaint stemmed from the same allegation:
that the employees breached an Agreement for Assignment of Inventions that each
individually entered into with AT&T. Id. at 1324. The court determined that the terms of
the agreements did not extend only to patentable inventions and therefore AT&T could
"rely on one theory with patent connotations, and on another theory involving no patent
question." Id. Because no patent issue was necessary to AT&T's claim, this court
reversed a district court holding that jurisdiction over the case was proper under section
1338(a). Id.
We reached a similar result in Uroplasty, Inc. v. Advanced Uroscience, Inc., 239
F.3d 1277 (Fed. Cir. 2001). Uroplasty alleged that its former CEO had filed a patent
application as co-inventor of a technology based on an Uroplasty trade secret. Id. at
1279. The claims at issue in Uroplasty were for misappropriation of trade secrets,
breach of fiduciary duty and breach of contract under Minnesota law. Id. Advanced
Uroscience removed the action from state court citing an interference Uroplasty had
attained against the subject patent. Id. Advanced Uroscience argued that the
interference "'called into question whether such Application and Patent make use of or
are in any way based upon confidential information and trade secrets of Uroplasty [and]
. . . by the nature of the claimed misappropriation . . . raised issues relating to an
Application for a United States Patent and the issuance of a United States Patent'
thereby alleging causes of action under 28 U.S.C. 1338(a)." Id. We vacated the district
court's finding of jurisdiction on the grounds that while the cited patent "may be
04-1452 11
evidence in support of Uroplasty's allegations . . . the mere presence of the patent does
not create a substantial issue of patent law." Id. at 1280.
In Uroplasty and AT&T, the plaintiffs raised contract and misappropriation claims
that implicated U.S. patents, yet we found that resolution of those state law claims were
not sufficient to establish jurisdiction under section 1338(a). In the case at hand, the
state law claims raised by Plaintiffs are one step further removed in that they implicate
the validity not of a U.S. patent, but of a patent issued under Japanese law. The fact
that UT owns a U.S. patent on the invention allegedly misappropriated may be evidence
of its claims, but the presence of the patent does not require resolution of a substantial
question of U.S. patent law. See Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d
1567, 1574 (Fed. Cir. 1997) (holding that a complaint alleging breach of a patent
assignment and royalty agreement does not state a claim arising under the patent laws
even though a consequence of finding such a breach may lead to allegations of
infringement); Speedco, 853 F.2d at 913 (holding that "the fact that patent issues are
relevant under state contract law to the resolution of a contract dispute cannot possibly
convert a suit for breach of contract into one 'arising under' the patent laws as required
to render the jurisdiction of the district court based on section 1338." (internal citation
omitted)); Consol. World Housewares, 831 F.2d at 265 ("the mere presence of a patent
issue cannot of itself create a cause of action arising under the patent laws"); Ballard
Med. Prod. v. Wright, 823 F.2d 527, 531 (Fed. Cir. 1987) (same).
Consideration of the relief requested by the Complaint does not change our
conclusion. NTT asserts that it was improper for Plaintiffs to seek an injunction
prohibiting NTT from disseminating information disclosed in the '382 patent because its
04-1452 12
trade secret claims were extinguished when it filed the patent application. NTT grounds
its challenge to the Plaintiffs' injunction in Bonito Boats, Inc. v. Thunder Craft Boats,
Inc., 489 U.S. 141 (1989). In Bonito Boats, the Supreme Court struck down as
preempted a Florida law that protected for an unlimited number of years boat hull
designs without regard for whether the designs had been denied patent protection, were
protected by an expired patent, or had been freely revealed to the public by their
creators. 489 U.S. at 159. Unquestionably the Court in Bonito Boats distinguished
between protection afforded inventors under federal patent laws and state trade secret
laws and held that states could not provide trade secret protection that conflicted with
the federal patent scheme. Id. at 151. The Court did not, however, hold that patent
laws preempt a patentee's right to recover under theories sounding in either contract or
tort for misappropriation of property protected under state law at the time of its
misappropriation. Nothing in the injunction requested by Plaintiffs would improperly
expand the scope of rights granted under the '382 patent and Plaintiffs' quest for such
an injunction does not require resolution of a substantial question of patent law.
For the reasons stated above, the district court erred in holding that it had
jurisdiction to hear this case pursuant to 28 U.S.C. § 1338(a). Because this court's
jurisdiction is premised on the district court's exercise of jurisdiction under section
1338(a), this court does not have jurisdiction to hear NTT's appeal.
B. Transferability of the Appeal
NTT asserts that in the event that we do not have jurisdiction to hear its appeal,
the appeal should be transferred to the Fifth Circuit. NTT raises a procedural issue to
preserve its appeal. NTT's original Notice of Removal was based exclusively on
04-1452 13
28 U.S.C. §§ 1331 and 1338(a), but it filed a Supplemental Notice of Removal on
October 15, 2001, that included a claim for removal jurisdiction based on 28 U.S.C.
§ 1330. The district court found jurisdiction under NTT's original Notice of Removal and
dismissed NTT's motion to file its Supplemental Notice of Removal on the grounds that
it was untimely and NTT had failed to show cause as to why, as required by 28 U.S.C.
§ 1441(d). NTT argues that its Supplemental Notice of Removal was not untimely
because NTT had not been properly served under the Hague Convention and therefore
the thirty day removal period had not yet begun to run. See Murphy Bros. v. Michetti
Pipe Stringing, Inc., 526 U.S. 344, 350-51 (1999) (holding that "service of process is the
official trigger for responsive action by an individual or entity named defendant"). NTT
initially raised this issue in its Supplemental Notice of Removal, but did not pursue it
after the district court found jurisdiction based on its original Notice of Removal.
NTT presents a colorable argument that its Supplemental Notice of Removal was
timely and therefore preserved its claim to removal jurisdiction under 28 U.S.C. § 1330.
Accordingly, because NTT presents an alternative jurisdictional argument capable of
being heard by the Fifth Circuit, it is in the interest of justice to transfer the appeal to that
court pursuant to 28 U.S.C. § 1631. It will then be for the Fifth Circuit to determine if
NTT properly raised its additional basis for removal jurisdiction and if it is appropriate to
reach NTT's claim for sovereign immunity.
III. CONCLUSION
For the foregoing reasons, we conclude that this court does not have jurisdiction
to hear NTT's appeal. Pursuant to 28 U.S.C. § 1631, we transfer the appeal to the
United States Court of Appeals for the Fifth Circuit.
04-1452 14
TRANSFERRED.
IV. COSTS
Each party shall bear its own costs.
04-1452 15