
USCA1 Opinion

	




          May 5, 1993           [NOT FOR PUBLICATION]                            UNITED STATES COURT OF APPEALS                                FOR THE FIRST CIRCUIT                                 ___________________          No. 92-2364                                                CARL DIMANNO,                                Plaintiff, Appellant,                                          v.                            JAY SUCH and THROTONICS CORP.,                                Defendants, Appellees.                                  __________________                     APPEAL FROM THE UNITED STATES DISTRICT COURT                          FOR THE DISTRICT OF MASSACHUSETTS                     [Hon. A. David Mazzone, U.S. District Judge]                                             ___________________                                 ___________________                                        Before                              Torruella, Cyr and Stahl,                                   Circuit Judges.                                   ______________                                 ___________________               Carl M. DiManno on brief pro se.               _______________                                  __________________                                  __________________                      Per  Curiam.   Carl M.  DiManno, pro  se appellant,                      ___________            appeals from the district  court's dismissal of his complaint            pursuant to 28 U.S.C.   1915(d).   The  main issue is whether            this action arises  under federal patent  laws.  We  conclude            that further proceedings are required.                                          I                      Appellant's complaint sought a declaratory judgment            with  respect  to  two  documents concerning  U.S.  patent  #            4,339,138  ("the  Patent").     The  first  document  was  an            Exclusive  License Agreement  (the  "License")  entered  into            between   appellant   and  appellee   Throtonics  Corporation            ("Throtonics").   That  agreement,  dated June  1, 1988,  and            signed  by  both  parties, provided  that  appellant  granted            Throtonics the right "to manufacture, have manufactured, use,            market, have marketed, sell and have sold devices based on or            relating to  the Invention."  Appellant's  complaint sought a            declaration that  the License was  "legally insignificant  on            the grounds  that a patent  assignment is superior  in rights            and  law to  a patent  license."   Appellant asserted  in his            complaint  that appellees  had claimed  an assignment  of the            same patent by appellant  and could not claim both  a license            and an assignment.  Appellant also sought a declaration  that            the License  failed as an assignment.                      The second document with respect to which appellant            sought a declaration was  an Assignment of Proprietary Patent                                         -2-            Rights  (the "Assignment").   The  Assignment, dated  June 1,            1988,  and signed by appellant as the assignor, provided that            "[t]he Assignor hereby  wholly and unconditionally transfers,            sells and assigns to [Throtonics] all rights of ownership  of            the Assignor under the said  U.S. Patent number 4,339,138 and            any and all other proprietary rights or any further rights."             The Assignment was not recorded with the Patent and Trademark            Office  until November 24, 1989.    Meanwhile,  in a document            dated September 28, 1989,  and signed by appellant, appellant            assigned "the entire right  title and interest . .  . in U.S.            Letters Patent  No. 4,339,138"  to  Kozmos, Inc.  ("Kozmos").            The assignment  to Kozmos  was recorded  with the  Patent and            Trademark  Office on  September 29,  1989, two  months before            recordation of the Assignment to Throtonics.                      Appellant's complaint sought a declaration that the            Assignment was "without legal standing as being abandoned, as            lacking the essential elements of a patent assignment, and as            being  superseded by a prior assignment of the  patent."                 Appellant contended that,  pursuant to 35  U.S.C.   261,  the            assignment to  Kozmos voided any claim  Throtonics might have            had to  a patent assignment.1   Appellant requested  that the                                            ____________________            1.  35 U.S.C.   261 provides, in relevant part, as follows:                   261.  Ownership; assignment                              An assignment, grant or conveyance shall be void as                 against any subsequent purchaser or mortgagee for a                 valuable consideration, without  notice, unless  it                                         -3-            district  court  declare that  neither  the  License nor  the            Assignment  could be the basis for a patent infringement suit            by appellees.                                          II                      There is  no diversity  of citizenship between  the            parties.   The sole basis of  federal jurisdiction claimed in            the complaint was  28 U.S.C.    1338(a), which gives  federal            district courts jurisdiction  over any  civil action  arising            under  any Act of Congress relating to patents.  The district            court determined  that it lacked  subject matter jurisdiction            over appellant's  claims.   In  determining that  appellant's            action  was subject to dismissal under 28 U.S.C.   1915(d) as            based  upon  an  indisputably  meritless  legal  theory,  the            district court reasoned as follows:                      [t]his  is  precisely  the   same  action                      brought by plaintiff against Jay Such and                      Throtonics in Civil Action  No. 91-10099-                      WD [sic].  That  action was dismissed for                      lack of subject  matter jurisdiction.  In                      the instant complaint, plaintiff  has not                      alleged any new legal theories that would                      provide  this  court with  subject matter                      jurisdiction.2                                            ____________________                 is recorded  in  the Patent  and  Trademark  Office                 within  three months from its  date or prior to the                 date of such subsequent purchase or mortgage.            2.  Although the  district  court  concluded  that  this  was            "precisely the same action" as an action previously dismissed            for lack  of subject matter jurisdiction,  the district court            did not expressly base its 1915(d)  dismissal on res judicata            grounds.  For that reason, we  do not rule on the question of            whether  a 1915(d)  dismissal on  res judicata  grounds would            have been appropriate.   In addition, we question whether the                                         -4-            The    district   court   denied   appellant's   motion   for            reconsideration.                                          III                      The issue  on appeal is whether  the district court            abused its  discretion in  concluding that appellant's  claim            that his  action "arises under"  the federal patent  laws was            based on an indisputably meritless legal theory.  The Supreme            Court has  defined the  requirements for "arising  under" the            federal patent laws as follows:                      [Section]  1338(a)  jurisdiction  .  .  .                      extend[s] only to those  cases in which 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 patent law is                      a necessary  element of one of  the well-                      pleaded claims.            Christianson v.  Colt Indus.  Operating Corp., 486  U.S. 800,            ____________     ____________________________            808-809 (1988).                        There is a plausible legal argument that patent law            is a "necessary element" of at least one of appellant's well-            pleaded  claims.   Therefore, we  conclude that  the district                                            ____________________            first case was  properly dismissed for lack of subject matter            jurisdiction.   The  complaint  in that  case claimed  patent            infringement.  In Kunkel v.  Topmaster Int'l, Inc., 906  F.2d                              ______     _____________________            693,  697 (Fed.  Cir. 1990), the  court held that  all that a            plaintiff needs to do to invoke federal jurisdiction is plead            the  elements  required  by  the patent  laws  for  a  patent            infringement claim.  That  "'a question of contract  law must            be decided  prior to reaching the  infringement question does            not  defeat  subject  matter  jurisdiction.'"  Id.  (citation                                                           ___            omitted).                                           -5-            court  erred  in  dismissing  this action  under     1915(d).            Appellant claimed that the Assignment is void under 35 U.S.C.               261  because it  was  not  recorded prior  to  appellant's            assignment  of  the  patent  to  Kozmos.    To  determine the            validity  of  the Assignment,  the  district  court would  be            required to  construe a federal  patent statute, 35  U.S.C.              261.  The  Supreme Court has held that  where the validity of            an assignment  depends upon construction of  the patent laws,            it  is a question  arising under the patent  laws.  Crown Dye                                                                _________            and Tool Co.  v. Nye Tool  & Machine Works,  261 U.S. 24,  33            ____________     _________________________            (1923).                      Unlike,  for  example,  the complaint  in  Combs v.                                                                 _____            Plough,  Inc.,  681 F.2d  469  (6th  Cir. 1982),  appellant's            _____________            complaint  does  not  allege  that  the  Assignment  is  void            exclusively for the reason that it was fraudulently obtained.            Such  a fraud claim would clearly arise only under state law.            In this  case, however, appellant's  complaint alleges, among            other claims, that the  assignment is void under 35  U.S.C.              261.   Construction of   261 is a question  of federal patent            law.  See FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568                  ___ _____________    ___________________            (Fed.  Cir.  1991)  (remanding  case to  district  court  and            clarifying the requirements  for creation  of an  enforceable            assignment  under    261).   Therefore, it  is arguable  that            patent law is a necessary element of one of appellant's well-                                         -6-            pleaded claims and that the district court had subject matter            jurisdiction under   1338(a).                      Nor is jurisdiction clearly lacking for the  reason            that "but  for the  availability of the  declaratory judgment            procedure, the Federal claim would arise only as a defense to            a state created action."  10A C. Wright, A. Miller & M. Kane,            Federal  Practice and  Procedure    2767, at  744-45  (2d ed.            ________________________________            1983);  see  American   Policyholders  Ins.  Co.  v.   Nyacol                    ___  ___________________________________       ______            Products,  Inc., No. 92-1949, slip. op. at 13 (1st Cir., Feb.            _______________            24, 1993).  The claim that the Assignment is void would arise            as a defense to a patent infringement action by appellees.  A            patent infringement action is clearly a federal action.  And,            according to the complaint, appellees had threatened to bring            such an action.                      We do not decide whether appellant has succeeded in            establishing  subject matter jurisdiction.  Nor do  we decide            whether res judicata or any  other defenses are available  to            appellees.   We  decide  only that  appellant's legal  theory            under which  subject matter jurisdiction could be established            is  not "indisputably  meritless"  and  that, therefore,  the            district  court erred  in dismissing  the complaint  under 28            U.S.C.   1915(d) on this basis.   Accordingly, we remand this            case  to   the  district   court  for  continuation   of  the            proceedings.                                         -7-                      The  district  court's      1915(d)  dismissal   is            reversed.            ________                                         -8-
