Krauser v. Biohorizons, Inc.
753 F.3d 1263
Fed. Cir.2014Background
- Krauser, a periodontist, designed a dental implant system in the late 1980s and had Minimatic manufacture prototypes.
- By 1991 Minimatic and Krauser entered a written 1991 Agreement stating Minimatic would own drawings and 510(k) filings and Krauser would receive royalties.
- Krauser obtained a patent in 1994; Shaw patents followed in 1995 and 1999 naming Shaw as inventor.
- Minimatic and Krauser entered a May 1996 settlement later withdrawn, and a October 1996 Agreement granting Krauser a 10-year conditional license to the Krauser patent and the dental implant system.
- Minimatic was approved for reorganization and merged into BioLok in 1997; BioLok later became BioHorizons through corporate changes.
- Krauser asserted ownership rights and sought relief in Florida state court; the action was removed to federal court and narrowed to ownership claims, with subsequent proceedings leading to this jurisdictional appeal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the court has jurisdiction under patent law. | Krauser’s inventorship claim created § 1338(a) jurisdiction. | BHI argues continued patent-law basis or law-of-the-case support. | No jurisdiction; withdrawal of inventorship claims removes patent-law basis. |
| Whether well-pleaded complaint rule preserves jurisdiction despite removal of inventorship claims. | Ownership claims do not depend on inventorship. | Inventorship issues might be necessary to resolve ownership. | No jurisdiction; inventorship is not necessary to resolve ownership claims under state law. |
| Whether federal preemption of patent law provides federal question jurisdiction. | Ownership claims could be preempted by patent law. | Preemption would establish a federal defense, not jurisdiction. | No jurisdiction; preemption is a defense, not a basis for removal. |
Key Cases Cited
- Gunn v. Minton, 133 S. Ct. 1059 (2013) (exclusive jurisdiction under §1338(a) requires patent creation or substantial question)
- Colt v. Collins?, 486 U.S. 808 (1988) (well-pleaded complaint must raise substantial federal patent questions)
- Gronholz v. Sears, Roebuck & Co., 836 F.2d 515 (Fed. Cir. 1987) (dismissal without prejudice removes patent-law basis for jurisdiction)
- Chamberlain Grp., Inc. v. Skylink Techs., Inc., 381 F.3d 1189 (Fed. Cir. 2004) (jurisdictional review when patent claims are eliminated)
- Nilssen v. Motorola, Inc., 203 F.3d 782 (Fed. Cir. 2000) (amendments removing patent claims divest jurisdiction)
- Metropolitan Life Insurance Co. v. Taylor, 481 U.S. 58 (1987) (patent preemption is a defense, not basis for removal)
- Forrester Env. Servs., Inc. v. Wheelabrator Techs., Inc., 715 F.3d 1329 (Fed. Cir. 2013) (no jurisdiction where remedies may be preempted by patent law)
- Christianson v. Colt Industries Operating Corp., 486 U.S. 800 (1988) (law-of-the-case considerations in transfer decisions; transferee court may revisit jurisdiction)
- Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329 (Fed. Cir. 2008) (patent-law questions not always determinative of jurisdiction)