Memorylink Corp. v. Motorola, Inc.

NOTE: This order is nonprecedentia1. United States Court of AppeaIs for the FederaI Circuit MEMORYLINK CORP., Plointiff-Appellant, V. MOTOROLA, INC., JONATHAN P. MEYER, HUGH C. DUNLOP, THOMAS G. BERRY, J. RAY WOOD, AND TERRI S. HUGHES, ` Defendants-Appellees. win 77 7 § 2010-1533 Appea1 from the Uni1;ed States District Court for the Northern District of I11inois in case no. 09-CV-'7401, Judge Wi11iam J. Hibb1er. ON MOTION Before RADER, Chief Judge. 0 R D E R Motorola, Inc. et a1. (Motoro1a) move to transfer this appeal to the United States Court of Appea1s for the Sev- enth Ci1'cuit. Mem01'y]in.k Co1'p. opposes transfer Mo- t0ro1a replies MEMORYLIN`K CORP V. MOTOROLA 2 Based upon our review of the papers submitted, it ap- pears that the district court's jurisdiction over this legal malpractice action arose in part under 28 U.S.C. § 1338 and thus our jurisdiction is proper. Although a claim for relief may be denied on non-patent grounds as it was here, to determine the district court's jurisdiction and our own jurisdiction we must look to what the plaintiff would be required to prove to prevail on the claim for relief. See David v. Brouse McDowell, L.P.A., 596 F.3d 1355, 1361-62 (Fed. Cir. 2010) (deber1nining district coLu't's jurisdiction based upon what the plaintiff would have to prove to prevail in a legal malpractice action). Here, Men10rylink’s complaint sought to correct the in- ventorship of the “Secret Patent," which would have re- quired Memory]ink to prove, inter alia, that certain individuals were and/or other individuals were not the actual inventors in order to prevail on its claim. Although patent ownership might not necessarily raise ah issue of patent law, patent inventorship does. Shum v. Intel Corp., 633 F.3d 1067, 1076 n.4 (Fed. Cir. 2010) (state law claims involving patent law issue of inventorship gave district court subject matter jurisdiction under 28 U.S.C. § 1338). We therefore deny the motion without prejudice to the parties continuing to address the jurisdictional issue to the merits panel. Accordingly, lT IS ORDERED THAT! (1) The motion is denied without prejudice to the par- ties raising the jurisdictional issue in the briefs. (2) Memorylink’s opening brief is due within 40 days from the date of filing of this order. 3 MEMoRYL1NK coRP v. MoroRoLA FoR THE CoURr HAY 0 2 mm /s/ Jan Horbaly Date J an Horbaly Clerk cc: Paul Eugene Schaafsma, Esq. Anne l\/I. Sidrys, Esq. . FlLED u.s. com or appeals F0R 519 ms FEoERAL c1Rcu1r l'?AY 02 2011 JANHORBAL¥ CLERK