Breed v. Hughes Aircraft Co.

253 F.3d 1173, 2001 Cal. Daily Op. Serv. 4884, 2001 Daily Journal DAR 6029, 59 U.S.P.Q. 2d (BNA) 1146, 2001 U.S. App. LEXIS 12891, 2001 WL 664240
CourtCourt of Appeals for the Ninth Circuit
DecidedJune 14, 2001
DocketNo. 99-56130
StatusPublished
Cited by12 cases

This text of 253 F.3d 1173 (Breed v. Hughes Aircraft Co.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Breed v. Hughes Aircraft Co., 253 F.3d 1173, 2001 Cal. Daily Op. Serv. 4884, 2001 Daily Journal DAR 6029, 59 U.S.P.Q. 2d (BNA) 1146, 2001 U.S. App. LEXIS 12891, 2001 WL 664240 (9th Cir. 2001).

Opinion

McKEOWN, Circuit Judge:

This case requires us to draw the line between the jurisdiction of our court and the jurisdiction of the Court of Appeals for the Federal Circuit. It also illustrates the relationship between pleading in the district court and federal appellate jurisdiction and serves as a reminder that pleading a patent claim in the complaint will, in all likelihood, put the case on the path to the Federal Circuit rather than the Ninth Circuit.

The underlying dispute stems from the breakdown in a long business relationship between Hughes Aircraft Company and Ben Breed, a physicist/inventor who performed consulting work for Hughes. After Hughes purportedly failed to honor an oral agreement regarding the development of certain technology, Breed sued, alleging multiple state law claims relating to breach of contract and misappropriation of trade secrets, as well as a single federal claim for correction of named inventor under the patent statute, 35 U.S.C. § 256. Federal court jurisdiction was premised on diversity, 28 U.S.C. § 1332, and on the district court’s jurisdiction over a “civil action arising under any Act of Congress relating to [1176]*1176patents,” 28 U.S.C. § 1338(a). The district court granted summary judgment in favor of Hughes, and Breed appealed to this court. We do not reach the merits, however; because the district court’s jurisdiction was based in part on § 1338, the Federal Circuit has exclusive jurisdiction over this case.

Background

Because our disposition rests on jurisdictional grounds, we summarize only briefly the factual background. Breed began his consulting work with Hughes in 1976. Breed claims that, in or around 1988, he entered into an oral agreement with Hughes regarding the development of certain magnetics technologies. The parties dispute what, if anything, was actually promised. Breed asserts that Hughes, through a senior staff engineer, promised that Breed and his consulting firm “would have a right of first refusal as to any magnetics work done at Hughes, and they would get as much of the magnetics technology work that was done at Hughes as they wanted.”

To make a very long story short, Breed claims that Hughes, beginning in 1995, breached that agreement by failing to give him work after the Department of Defense’s Advanced Research Projects Agency awarded Hughes a major contract involving magnetics. As part of his case, Breed alleges that he assigned four patents to Hughes in reliance on the oral agreement regarding magnetics work. In addition, he states that Hughes improperly omitted his name as an inventor on a fifth patent, No. 5,264,793, “Split Array Dipole Moment Detection and Localization” (“the ’793 Patent”).

Breed, along with his consulting firm, filed suit against Hughes in state court in Texas. Hughes then filed a complaint for declaratory relief in federal court in the Central District of California. The Texas action was removed to the United States District Court for the Western District of Texas, and then transferred to the Central District of California and consolidated with the declaratory judgment action filed by Hughes.

Breed’s First Amended Complaint makes 14 separate claims arising out of the alleged oral agreement. All except one arise under California law. The exception, Claim Eleven, was for “Omission of Inventor” under 35 U.S.C. § 256.2 In his complaint, Breed specifically “requested] that the [district] Court issue an order requiring the amendment of the ’793 Patent to reflect that Breed is a co-inventor.”

The district court granted summary judgment to Hughes on all claims. Specifically, the court found that the staff engineer lacked authority under California law to bind Hughes, and that the alleged oral agreement was too indefinite to be an enforceable contract. In discussing Claim Eleven, the omission of inventor claim, the district court stated,

[1177]*1177The Patent Act allows the parties and their assignees to apply to the Commissioner of the United States Patent and Trademark Office for a certificate correcting errors [relating to the omission of a name from a patent]. See 35 U.S.C. § 254. Hughes has provided Breed with Documentation to execute in order to have his name included on the ’793 Patent.... Because the parties have already begun the process of including Breed’s name as an inventor of the ’793 Patent, a further order from this Court is not necessary.

Breed specifically appealed the dismissal of the co-inventor claim. Hughes states in its appellate brief that “Breed’s name was inadvertently left off’ the ’793 Patent and that Hughes had sent Breed paperwork to remedy the omission, but Breed states in its own brief, “Presently, there has been no change in the standoff concerning this particular issue, and Dr. Breed ha[s] been deprived of his right to have the District Court issue an order compelling the correction of the ’793 Patent.”

Discussion

We must first address jurisdiction. Though neither party actually raised the issue on appeal, this court has an obligation to review, sua sponte, whether we have jurisdiction. See Bender v. Williamsport Area Sch. Dist., 475 U.S. 534, 541, 106 S.Ct. 1326, 89 L.Ed.2d 501 (1986) (“[EJvery federal appellate court has a special obligation to ‘satisfy itself not only of its own jurisdiction, but also that of the lower courts in a cause under review,’ even though the parties are prepared to concede it.”) (quoting Mitchell v. Maurer, 293 U.S. 237, 244, 55 S.Ct. 162, 79 L.Ed. 338 (1934)); WMX Techs., Inc. v. Miller, 104 F.3d 1133, 1134 (9th Cir.1997). We, of course, have jurisdiction to determine our own jurisdiction. United States v. Reyes-Platero, 224 F.3d 1112, 1114 (9th Cir.2000).

We do not doubt that the district court had .subject matter jurisdiction over the case. As stated in Breed’s First Amended Complaint, the court’s jurisdiction was premised both on diversity of citizenship, 28 U.S.C. § 1332, and on the court’s jurisdiction over a “civil action arising under any Act of Congress relating to patents,” 28 U.S.C. § 1338(a). We do question, however, whether we have jurisdiction over the appeal, or whether this case should properly be heard by the Federal Circuit.

The Federal Circuit has “exclusive jurisdiction of an appeal from a final decision of a district court of the United States ... if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title.” 28 U.S.C. § 1295(a).

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Ben R. Breed v. Hughes Aircraft Company
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253 F.3d 1173, 2001 Cal. Daily Op. Serv. 4884, 2001 Daily Journal DAR 6029, 59 U.S.P.Q. 2d (BNA) 1146, 2001 U.S. App. LEXIS 12891, 2001 WL 664240, Counsel Stack Legal Research, https://law.counselstack.com/opinion/breed-v-hughes-aircraft-co-ca9-2001.