NOTE: This order is nonprecedentia1.

United States Court of Appeals
for the Federal Circuit

JOHN L. DEROSA,
Plaintiff-Appellee,

V.

J.P. WALSH & J.L. MARMO ENTERPRISES, INC.,
Defendant-Appellant. '

2012-1401 -

Appeal from the United States District Court for the
Eastern District of Virginia in case no. lO-CV-OZS'?, Judge
Claude M. Hilton.

ORDER

The court considers whether this appeal should be
transferred to the United States Court of Appeals for the
Fourth Circuit.

In order for this court to have jurisdiction over J.P.
Wa1sh & J.L. Marmo Enterprises, Inc.’s ("Appellant")
appeal, the district court's jurisdiction must have arisen
under the patent 1aWs. 28 U.S.C. §§ 1295(a)(1) and 1338.
In Holmes Group, Inc. u. Vornado Air Circulcztion Sys-
tems, Inc., 535 U.S. 826, 830 (2002), the Supreme Court
held:

JOHN DEROSA V. J.P. WALSH 2

The well-pleaded-complaint rule has long
governed whether a case "arises under” fed-
eral law for purposes of § 1331. As "appro-
priately adapted to § l338(a),” the well-
pleaded-complaint rule provides that
whether a case "arises under" patent law
"must be determined from what necessarily
appears in the plaintiffs statement of his
own claim in the bill or declaration...." The
plaintiffs well-pleaded complaint must "es-
tablis[h] either that federal patent law cre-
ates the cause of action or that the plaintiffs
right to relief necessarily depends on resolu-
tion of a substantial question of federal pat-
ent law....”

(Citations omitted.)

In this case, it appears John L. Derosa’s complaint is
devoid of any patent claims and, thus, the district court's
jurisdiction was not based on § 1338. The fact that Appel-
lant counterclaimed for patent infringement is not suffi-
cient to confer jurisdiction upon this court. Id. at 832. We
note that the Leahy-Smith America lnvents Act, Public
Law 112-29, ("America lnvents Act") does not change this
analysis, as the changes to 28 U.S.C. § 1295(a)(1) apply to
any civil action commenced on or after September 16,
2011.1

1 Section 19 of the American lnvents Act amends
28 U.S.C. § 1295(a)(l) as follows:

(a) The United States Court of Appeals for the
Federal Circuit shall have exclusive jurisdiction --
(1) of an appeal from a final decision of a
district court of the United States . . . in
any civil action arising under, or in any
civil action in which a party has as-

3 JOHN DEROSA V. J.P. WALSH

Accordingly,
IT Is ORDERED THAT:

Absent objection received within 21 days of the date of
filing of this order, this appeal shall be transferred to the
United States Court of Appeals for the Fourth Circuit
pursuant to 28 U.S.C. § 1631.

FoR THE CoURT
JUL 13 mm /S/Jan Horbaly
Date J an Horbaly
Clerk
cc: William E. Hassan, Esq.
Thomas P. Pavelko, Esq.
s25
“'s'ricfiuz=tnsai\i c\ncurfoa
JU|_ 'l 3 2012
JAN HUHBN.Y
CLERK

serted a compulsory counterclaim aris-
ing under, any Act of Congress relating
to patents or plant variety protection.

Section 19(e) of the America lnvents Act states "[t]he
amendments made by this section shall apply to any civil
action commenced on or after the date of the enactment of

this Act.”

