COMPLAINT ABOUT LICENSE AGREEMENT DOES NOT ARISE UNDER PATENT LAWS

Excelstor Technology, Inc., v. Papst Licensing GMBH & Co. KG, [2008-1140] (September 16, 2008) [LOURIE, Mayer, Schall] The Federal Circuit affirmed the dismissal of the action for lack of subject matter jurisdiction.
DISCUSSION: The Federal Circuit noted that where there is no claim of diversity of citizenship, jurisdiction depends upon whether there is a federal question. § 1338 jurisdiction extends to any case “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.” Under the well-pleaded complaint rule, “arising under” jurisdiction “must be determined from what necessarily appears in the plaintiff’s statement of his own claim in the bill or declaration, unaided by anything alleged in anticipation or avoidance of defenses which it is thought the defendant may interpose.” A claim does not arise under the patent laws if a patent issue appears only in a defense to that claim. The Federal Circuit agreed that plaintiff’s complaint about the license agreement, and about payment of royalties on products after the defendant’s rights had been exhausted, did not arise under the patent laws.