Nanomedicon, LLC v. Research Foundation of the State University
2011 U.S. Dist. LEXIS 50077
E.D.N.Y2011Background
- Nanomedicon, LLC sues SUNY Research Foundation and Dr. Gouma over rights under a 2007 option and exclusive patent license agreement related to a sensor technology.
- Gouma, as an SUNY Stony Brook employee, is alleged to have contributed to invention and is claimed to be bound by a 2006 Confidentiality Agreement.
- Plaintiff alleges Gouma engaged in a harassment campaign to force renegotiation and to strip Nanomedicon of exclusive rights.
- In 2010 the Research Foundation gave notice of termination for alleged defaults; Nanomedicon claimed cures, but the Agreement was terminated on September 7, 2010.
- Plaintiff filed in New York state court; Defendants removed to federal court asserting patent jurisdiction.
- Motion to remand, based on lack of arising-under-patent-law claims, is granted.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Do the claims arise under patent law? | Nanomedicon argues the claims are state-law and not patent-rooted. | Defendants contend the dispute implicates patent rights and thus arises under patent law. | No, there is no essential patent-law duty; not arising under patent law. |
| Is removal proper given the complaint's claims? | Removal is improper because no federal-question arises. | Removal is proper if any claim arises under federal patent law. | Removal not proper; court lacks subject-matter jurisdiction. |
| Does Grable/Christianson framework support federal jurisdiction here? | Grable requires a substantial federal issue; not present. | Patents inherently create federal questions when central to claims. | Not satisfied; jurisdiction remains in state court. |
Key Cases Cited
- Grable & Sons Metal Prods., Inc. v. Darue Engineering & Mfg., 545 U.S. 308 (Supreme Court 2005) (federal-question jurisdiction requires substantial, disputed federal issue)
- Christianson v. Colt Indus. Works, 486 U.S. 800 (Supreme Court 1988) (essential element test for arising-under jurisdiction)
- In re Ciprofloxacin Hydrochloride Antitrust Litigation, 166 F.Supp.2d 740 (E.D.N.Y. 2001) (patent-law essentiality required for arising-under analysis)
- Uroplasty, Inc. v. Adv. Uroscience, Inc., 239 F.3d 1277 (Fed. Cir. 2001) (patent-law issues must be essential to claims)
- Wham-O Mfg. Co. v. All-American Yo-Yo Corp., 377 F.Supp. 993 (E.D.N.Y. 1973) (remand when case involves pure contract/tort claims not hinging on patent law)
- American Tel. & Tel. Co. v. Integrated Network Corp., 972 F.2d 1321 (Fed. Cir. 1992) (patent jurisdiction not present when based on non-patent claims)
- Rivet v. Regions Bank of Louisiana, 522 U.S. 470 (Supreme Court 1998) (removal based on federal-question jurisdiction; state claims animating federal issues)
- Bounds v. Pine Belt Mental Health Care Resources, 593 F.3d 209 (2d Cir. 2010) (standard for evaluating removal based on federal-question content)