United States Court of Appeals
for the Federal Circuit
__________________________
MEMORYLINK CORP.,
Plaintiff-Appellant,
v.
MOTOROLA, INC., JONATHAN P. MEYER,
HUGH C. DUNLOP, THOMAS G. BERRY,
J. RAY WOOD, AND TERRI S. HUGHES,
Defendants-Appellees.
__________________________
2010-1533
__________________________
Appeal from the United States District Court for the
Northern District of Illinois in case no. 09-CV-7401, Judge
William J. Hibbler.
__________________________
ON PETITION FOR PANEL REHEARING AND
REHEARING EN BANC
__________________________
PAUL E. SCHAAFSMA, Novus IP, LLC, of Chicago,
Illinois, filed a combined petition for panel rehearing and
rehearing en banc for plaintiff-appellant.
ANNE M. SIDRYS, P.C., Kirkland & Ellis, LLP, of
Chicago, Illinois, filed a response to the petition for defen-
dants-appellees. With her on the response were NYIKA O.
STRICKLAND and JOEL R. MERKIN.
__________________________
MEMORYLINK CORP v. MOTOROLA 2
Before RADER, Chief Judge, NEWMAN, LOURIE,
BRYSON, LINN, DYK, PROST, MOORE, O’MALLEY, REYNA,
and WALLACH, Circuit Judges.
PER CURIAM.
O’MALLEY, Circuit Judge, dissents from the denial of
the petition for rehearing en banc.
. ORDER
A combined petition for panel rehearing and rehear-
ing en banc was filed by Plaintiff-Appellant, and a re-
sponse thereto was invited by the court and filed by
Defendants-Appellees. The petition for rehearing was
referred to the panel that heard the appeal, and thereaf-
ter the petition for rehearing en banc and the response
were referred to the circuit judges who are authorized to
request a poll of whether to rehear the appeal en banc. A
poll was requested, taken, and failed.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The petition of Plaintiff-Appellant for panel re-
hearing is denied.
(2) The petition of Plaintiff-Appellant for rehearing en
banc is denied.
(3) The mandate of the court will issue on April 18,
2012.
FOR THE COURT
April 11, 2012 /s/ Jan Horbaly
Date Jan Horbaly
Clerk
United States Court of Appeals
for the Federal Circuit
__________________________
MEMORYLINK CORP.,
Plaintiff-Appellant,
v.
MOTOROLA, INC., JONATHAN P MEYER,
HUGH C. DUNLOP, THOMAS G. BERRY,
J. RAY WOOD, AND TERRI S. HUGHES,
Defendants-Appellees.
__________________________
2010-1533
__________________________
Appeal from the United States District Court for the
Northern District of Illinois in case no. 09-CV-7401, Judge
William J. Hibbler.
O’MALLEY, Circuit Judge, dissenting from the denial
of the petition for rehearing en banc.
__________________________
For the reasons detailed in my dissent from the denial
of rehearing en banc in Byrne v. Wood, Herron & Evans,
LLP, --- F.3d ---, 2012 U.S. App. LEXIS 6021 (Fed. Cir.
Mar. 22, 2012), I respectfully dissent from the court’s
refusal to consider this matter en banc. This court’s
routine extension of jurisdiction to purely state-law mal-
practice claims is improper and conflicts with governing
Supreme Court precedent. The fact that this appeal was
resolved by way of a judgment pursuant to Fed. Cir. R. 36
MEMORYLINK CORP v. MOTOROLA 2
(“Rule 36”) does not render the grounds upon which our
jurisdiction was premised any less incorrect and should
not discourage us from revisiting that judgment.
Here, Memorylink alleged a single count of legal mal-
practice, under Illinois law, based on the defendants’
alleged negligent failure to identify the proper inventors
in a patent application. The district court dismissed the
complaint as time-barred under the relevant Illinois
statutes of limitations and repose, and Memorylink ap-
pealed to this court. Appellees moved to transfer the
appeal to the Seventh Circuit on grounds that the cause of
action arose under state, not federal patent law. We
denied that motion on the mistaken belief that Memory-
link’s complaint “sought to correct the inventorship” of the
patent at issue. Memorylink Corp. v. Motorola, Inc. 419
Fed.App’x. 991, 992 (Fed. Cir. 2011). That ruling was
expressly “without prejudice” to Appellees’ right to raise
the issue again to the merits panel. Id. Appellees, there-
after, continued to press their jurisdictional objection in
their merits brief.
In their brief, Appellees pointed out that, in fact, no
inventorship challenge was brought in this action, ex-
plained that a separate federal action seeking to correct
inventorship and asserting infringement was filed in
federal court and remains pending, and asserted that it is
the second action that arises under the patent laws, not
this one. Brief of Defendants-Appellees at 3-5, Memory-
link Corp. v. Motorola, Inc., No. 2010-1533 (Fed. Cir. June
24, 2011). Appellees disagreed that this court could
properly exercise jurisdiction over this matter which
raises issues cognizable only under state law and which
3 MEMORYLINK CORP v. MOTOROLA
was, in their view, properly in federal court only because
the parties were of diverse citizenship. 1
The panel disposed of this appeal via Rule 36, our rule
permitting summary affirmance of appeals in the follow-
ing circumstances:
The court may enter a judgment of affirmance without
opinion, citing this rule, when it determines that any of
the following conditions exist and an opinion would have
no precedential value:
(a) the judgment, decision, or order of the
trial court appealed from is based on find-
ings that are not clearly erroneous;
(b) the evidence supporting the jury’s ver-
dict is sufficient;
(c) the record supports summary judg-
ment, directed verdict, or judgment on the
pleadings;
(d) the decision of an administrative
agency warrants affirmance under the
standard of review in the statute authoriz-
ing the petition for review; or
(e) a judgment or decision has been en-
tered without an error of law.
1 The fact that defendants—unsurprisingly, given
their successful appeal in this court—now consent to our
jurisdiction is irrelevant. See, e.g., Coastal Corp. v.
United States, 713 F.2d 728, 730 (Fed. Cir. 1983) (“Juris-
diction of a tribunal, however, cannot be conferred by
waiver or acquiescence. A court always is obligated to
consider not only its own jurisdiction but that of the
tribunal from which an appeal is taken.”) (citing Mans-
field, Coldwater & Lake Mich. Ry. Co. v. Swan, 111 U.S.
379, 382 (1884)).
MEMORYLINK CORP v. MOTOROLA 4
Fed. Cir. R. 36. By resorting to Rule 36, the panel
necessarily resolved Appellee’s jurisdictional challenge—
rejecting it without discussion.
Though the panel’s use of Rule 36 to resolve this mat-
ter, including the question of our subject matter jurisdic-
tion over it, is understandable given the extent and
breadth of our case law on the topic, 2 it should not insu-
late the decision from en banc review. A Rule 36 judg-
ment remains a judgment of this court and parties should
not be discouraged from asking the entire court to assess
the propriety of those judgments where our subject matter
jurisdiction is in question.
As discussed at length in my dissent from the en banc
denial in Byrne, the jurisdictional predicate upon which
the exercise of appellate review in this court rests is
wrong. The Supreme Court in Christianson outlined a
two-prong test, in which district court jurisdiction under
§ 1338(a) extends "only to those cases in which a well-
pleaded complaint establishes either (1) that federal
patent law creates the cause of action or (2) 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 Industries Operat-
ing Corp., 486 U.S. 800, 808-09, (1988) (citations omitted).
It is the second prong of the Christianson test that is at
2 See, e.g., Air Measurement Techs., Inc. v. Akin
Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed.
Cir. 2007); Immunocept, LLC v. Fulbright & Jaworski,
LLP, 504 F.3d 1281 (Fed. Cir. 2007); Davis v. Brouse
McDowell, L.P.A., 596 F.3d 1355 (Fed. Cir. 2010); Byrne v.
Wood, Herron & Evans, LLP, 450 F. App'x 956 (Fed. Cir.
2011).
5 MEMORYLINK CORP v. MOTOROLA
issue here, and in Grable & Sons Metal Prods. v. Darue
Eng'g & Mfg., 545 U.S. 308, 313-14 (2005), the Court
articulated the test for that prong as follows: "does a
state-law claim necessarily raise a stated federal issue,
actually disputed and substantial, which a federal forum
may entertain without disturbing any congressionally
approved balance of federal and state judicial responsi-
bilities."
Here, to the extent this negligence case implicates
patent law at all, it does not do so in any substantial or
meaningful way. No patent rights will be altered, no
change in inventorship can occur in the context of it, and
no binding discussion of principles of inventorship could
emerge. And, resolution of the patent issue involved is
only one factor in the state law negligence analysis which
would be employed in deciding this case; the federal issue
is simply not dispositive of the case.
Balanced against this insubstantial brush with patent
law is the fact that, by asserting jurisdiction over these
types of cases, we are disturbing the appropriate balance
between state and federal courts. Where as here, the
patent law issue is resolved in a purely hypothetical
context, with no binding effect on patent rights or govern-
ing patent law, the federal interest in patent law uniform-
ity is slim. That interest is simply insufficient to supplant
the state law interest in policing the conduct of attorneys
practicing within its borders or in the uniform application
of state law negligence principles.
As we have explained on many occasions, “[a]ppeals
whose judgments are entered under Rule 36 receive the
full consideration of the court, and are no less carefully
decided than the cases in which we issue full opinions.
The Rule permits the court to dispense with issuing an
opinion that would have no precedential value, when the
MEMORYLINK CORP v. MOTOROLA 6
circumstances of the Rule exist.” U.S. Surgical Corp. v.
Ethicon, Inc., 103 F.3d 1554, 1556 (Fed. Cir. 1997) (citing
Taylor v. McKeithen, 407 U.S. 191, 194 n. 4 (1972). Full
review of a matter necessarily includes review at all
stages of the appellate process, including thoughtful en
banc review where appropriate.
While Rule 36 may provide an efficient tool through
which to dispose of appeals that merely retread familiar
ground, it does not relieve us of our obligation to deter-
mine whether that ground needs re-tilling. It is inappro-
priate to allow our reluctance to consider Rule 36 cases en
banc to shield important jurisdictional decisions from
review, particularly where, as here, non-frivolous chal-
lenges to our subject matter jurisdiction have been lodged.