United States Court of Appeals,
Fifth Circuit.
No. 93-2882.
NATEC, INC. and Natec Resources, Inc., Plaintiffs-Appellants,
v.
DETER COMPANY, et al., Defendants.
DETER COMPANY, Defendant-Appellee,
v.
BENETECH, Defendant-Appellant.
Aug. 8, 1994.
Appeal from the United States District Court for the Southern
District of Texas.
Before KING, JOLLY, and DAVIS, Circuit Judges.
PER CURIAM:
I.
Appellants, Natec, Inc., Natec Resources, Inc., and Benetech,
hold licenses to operate a patent owned by appellee, Deter Company.
The license agreements were entered into following settlement of
separate patent infringement lawsuits in courts other than the
Southern District of Texas, where this suit was filed. The instant
suit sought various types of relief, including a declaration that
the license agreements were unenforceable. This particular claim
for relief alleged that the patent, which is the subject of the
license agreements, expired before the termination date of the
license agreement, and that Deter could not enforce the license
agreement after expiration of the patent. Deter filed motions for
summary judgment urging the district court to give res judicata
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effect to the earlier consent judgments and settlements. The
district court essentially agreed with appellee's plea of res
judicata and dismissed plaintiffs' suit.
II.
We are persuaded that we lack jurisdiction to consider this
appeal. Under 28 U.S.C. § 1295(a), the Federal Circuit has
exclusive jurisdiction of an appeal where the district court's
jurisdiction was based, in whole or in part, on 28 U.S.C. § 1338.
Section 1338(a) provides: "The district courts shall have original
jurisdiction of any civil action arising under any Act of Congress
relating to patents...."
The district court's jurisdiction in this case was based in
part on § 1338. The right of the patent holder, Deter, to enforce
the settlement agreements and obtain royalties for use of the
patent after it expires is a substantial question of federal patent
law. See Brulotte v. Thys Co., 379 U.S. 29, 85 S.Ct. 176, 13
L.Ed.2d 99 (1964); Hemstreet v. Spiegel, Inc., 851 F.2d 348
(Fed.Cir.1988). Because the plaintiffs' right to relief depends
upon resolution of a substantial question of federal patent law,
exclusive jurisdiction over this appeal is vested in the Federal
Circuit. See Christianson v. Colt Indus. Operating Corp., 486 U.S.
800, 809, 108 S.Ct. 2166, 2174, 100 L.Ed.2d 811 (1988); Wang
Laboratories v. Applied Computer Sciences, 926 F.2d 92, 94 (1st
Cir.1991).
We therefore transfer this appeal to the Federal Circuit
pursuant to 28 U.S.C. § 1631. The clerk of this court is directed
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to transmit the record, briefs, and other documents relating to
this appeal to the clerk of the Federal Circuit.
APPEAL TRANSFERRED.
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