USPPS, LTD. v. Avery Dennison Corp.
647 F.3d 274
| 5th Cir. | 2011Background
- USPPS filed a diversity-based suit against Avery, Renner, and DuChez regarding patent-prosecution conduct in Beasley's invention of personalized postage stamps.
- Beasley originally filed a patent in 1999; in 2001 Avery agreed to prosecute the application and Renner received power of attorney from Beasley.
- Renner abandoned Beasley's original application in June 2001 and submitted a new, broader application; PTO later rejected the applications in mid-2002 and again in 2003.
- USPPS alleges Renner’s loyalties were to Avery and not Beasley/USPPS, creating a fiduciary-conflict that harmed USPPS’s patent prospects and royalties.
- USPPS seeks damages for lost royalties due to presumed patent denial; causation hinges on patentability, tying state-law claims to patent-law questions.
- This is USPPS’s third jurisdictional-related review; the district court granted summary judgment on timeliness and causation, and the Fifth Circuit later transferred the case.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether § 1338(a) exclusivity applies | USPPS argues patent law is essential, invoking §1338. | Avery/Renner contend jurisdiction is proper here under traditional grounds or avoid exclusive patent issue. | Lacks jurisdiction; transfer to Federal Circuit appropriate. |
| Whether the case arises under patent law for purposes of jurisdiction | Patent-law questions are required to prove damages and injury. | State-law claims can be severed from patent issues; no exclusive patent question. | Yes, arises under patent law; but jurisdiction resides with Federal Circuit via §1338. |
| Whether law-of-the-case forecloses jurisdiction | Prior panel’s merits ruling implied jurisdiction. | Law-of-the-case does not bind transfer decision when jurisdiction was not raised. | Law-of-the-case does not bar transfer. |
| Whether the proper remedy is transfer to the Federal Circuit | Court should retain and decide the case here. | Transfer is required when exclusive patent jurisdiction exists. | Appeal transferred to the Federal Circuit. |
Key Cases Cited
- Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988) (well-pleaded complaint rule for arising-under jurisdiction)
- Grable & Sons Metal Prods., Inc. v. Darue Eng’g & Mfg., 545 U.S. 308 (2005) (substantial federal issue necessary for federal jurisdiction in state-law claims)
- Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, LLP, 504 F.3d 1262 (Fed. Cir. 2007) (state-law attorney malpractice in patent case can arise under patent law)
- Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281 (Fed. Cir. 2007) (claim scope in patent matter can create §1338 jurisdiction)
- Davis v. Brouse McDowell, L.P.A., 596 F.3d 1355 (Fed. Cir. 2010) (patentability as element in malpractice claims creates jurisdiction)
- Singh v. Duane Morris LLP, 538 F.3d 334 (5th Cir. 2008) (declined to extend Air Measurement; held substantial federal interest present in patent issues)
- Scherbatskoy v. Halliburton Co., 125 F.3d 288 (5th Cir. 1997) (resolution of patent-law issues implicated in non-patent claims warrants transfer)
- Natec, Inc. v. Deter Co., 28 F.3d 28 (5th Cir. 1994) (exclusive jurisdiction for patent cases under §1338)
- Christianson v. Colt Indus. Operating Corp. (duplicate entry to satisfy schema), 486 U.S. 800 (1988) (as above)