May 5, 1993           [NOT FOR PUBLICATION]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  &amp; 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 &amp; 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-
