                         NOTE: This order is nonprecedential.

 United States Court of Appeals for the Federal Circuit
                                       2008-1265

                               NOKIA CORPORATION,

                                                Plaintiff-Appellee,

                                           v.

           INTERDIGITAL, INC., INTERDIGITAL COMMUNICATIONS, LLC,
               and INTERDIGITAL TECHNOLOGY CORPORATION,

                                                Defendants-Appellants.

 On appeal from the United States District Court for the Southern District of New York
                 in case no. 08-CV-01507, Judge Deborah A. Batts.

                                     ON MOTION

Before BRYSON, GAJARSA, and MOORE, Circuit Judges.

MOORE, Circuit Judge.

                                       ORDER

      Nokia Corporation moves to dismiss this appeal for lack of jurisdiction.

InterDigital, Inc. et al. (InterDigital) opposes. Nokia replies. InterDigital moves for a

stay, pending appeal, of the March 25, 2008 order issued by the United States District

Court for the Southern District of New York. Nokia opposes.

      InterDigital filed a complaint against Nokia before the International Trade

Commission (ITC) alleging infringement of its patents. Nokia moved to terminate or

stay the proceedings before the ITC, alleging that the four patents at issue were

developed under a joint development agreement and that by virtue of that agreement

Nokia had a license.     Nokia further argued that the agreement required that any
disputes be submitted to arbitration. The administrative law judge (ALJ) denied Nokia’s

motion finding that Nokia’s earlier filing of a declaratory judgment complaint in the

United States District Court for the District of Delaware demonstrated a desire to litigate,

rather than arbitrate the disputes between the parties.

       Approximately one month after the ALJ denied Nokia’s motion to stay or

terminate, Nokia filed a complaint in the United States District Court for the Southern

District of New York seeking to enjoin InterDigital from participating in the ITC

proceeding and compel arbitration. The complaint also included an alternative claim for

declaratory relief that Nokia has a license. On March 25, 2008, the district court entered

an order requiring InterDigital to file, no later than April 11, 2008, a motion to stay

proceedings in the ITC with respect to Nokia. The district court further ordered that if

the motion to stay the ITC proceeding as to Nokia is denied, InterDigital would be

required to file a motion for termination of the ITC proceeding as to Nokia. InterDigital

appeals the March 25 order and seeks a stay, pending appeal, of that order.

       Nokia argues that the complaint does not arise under the patent laws and thus

this court lacks jurisdiction. InterDigital responds that the complaint does arise under

the patent laws and thus we have jurisdiction.

       Pursuant to 28 U.S.C. § 1295(a)(1), this court has jurisdiction over an appeal

from a district court decision if the jurisdiction of the district court was based in whole or

in part on 28 U.S.C. § 1338. Section 1338 provides that district courts have jurisdiction

over civil actions arising “under any Act of Congress relating to patents.” A district court

has jurisdiction pursuant to section 1338 if “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

2008-1265                                    2
patent law is a necessary element of one of the well-pleaded claims.” Christianson v.

Colt Indus. Operating Corp., 486 U.S. 800, 809 (1988).          “[A] claim supported by

alternative theories in the complaint may not form the basis for § 1338(a) jurisdiction

unless patent law is essential to each of those theories.”        Id. at 810.   The mere

presence of patent issues in a case does not lead to a conclusion that the case arises

under the patent laws. See Ballard Med. Prods. v. Wright, 823 F.3d 527, 530-31 (Fed.

Cir. 1987) (rejecting argument that presence of patent issues determines this court’s

jurisdiction).

       Neither party contends that federal patent law creates the cause of action in this

case. Rather, the parties’ dispute centers on whether Nokia’s claims for relief in the

district court depended on resolution of a substantial question of federal patent law.

Nokia argues that its claims arise under contract and do not depend on any question of

federal patent law, much less a substantial one. InterDigital argues that Nokia’s right to

relief “depends on resolution of substantial questions of federal patent law, including:

(1) whether the claims, written after the date of the [agreement], could possibly be

“developed under” the [agreement], when they have a priority date prior to the

agreement and must, to be valid, be supported under 35 U.S.C. § 112; (2) whether the

allowed claims are presumed to be supported by the written description of the patent;

and (3) whether it is possible for claims that were supported by the written description of

the parent application to have incorporated later developed technology.”

       The court agrees with Nokia that the claims presented in Nokia’s complaint 1 do

not require resolution of a substantial question of federal patent law. This is a contract


       1
              Nokia’s district court complaint was filed under seal. Thus, we do not
detail the counts in the complaint.

2008-1265                                   3
dispute involving interpretation of terms in the agreement and we find InterDigital’s

arguments to the contrary unavailing. Therefore, we lack jurisdiction.

       InterDigital asks that, if this court determines that it lacks jurisdiction, the case be

transferred to the United States Court of Appeals for the Second Circuit pursuant to 28

U.S.C. § 1631. The court agrees that transfer is appropriate. 2 Because we transfer, the

motion to dismiss is moot.

       Accordingly,

       IT IS ORDERED THAT:

       (1)    The case and InterDigital’s motion for a stay, pending appeal, Nokia’s

opposition, and InterDigital’s reply are transferred to the United States Court of Appeals

for the Second Circuit pursuant to 28 U.S.C. § 1631.

       (2)    All other motions are denied as moot.

                                                   FOR THE COURT




      April 7, 2008                               /s/ Kimberly A. Moore
            Date                                  Kimberly A. Moore
                                                  Circuit Judge

cc:    Patrick J. Flinn, Esq.
       Donald R. Dunner, Esq.

s17

ISSUED AS A MANDATE:             April 7, 2008




       2
               Because the district court’s order requires imminent action by InterDigital,
the parties may wish to file copies of their motion papers, along with a copy of
InterDigital’s notice of appeal and this order, directly with the Second Circuit
immediately.

2008-1265                                     4
