Corning v. Zellen, et al.

• Court: District Court, D. New Hampshire
• Decided: February 3, 1999
• Docket: CV-98-499-M
• Status: Published

Opinion

Corning v. Zellen, et al. CV-98-499-M 02/03/99 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Corning Incorporated, Plaintiff

v. Civil No. 98-499-M

Zellen Corporation and Eric S. Berry, Defendants

O R D E R

This is a declaratory judgment action brought by Corning,

Incorporated ("Corning") of New York against defendants Zellen

Corporation ("Zellen") and Eric S. Berry ("Berry") of New

Hampshire. Corning seeks a declaration of ownership rights to

certain patents. It asserts that the court may properly exercise

diversity jurisdiction under 28 U.S.C. § 1332.

Defendants Zellen and Berry have moved under Fed. R. Civ. P.

12(b)(1) to dismiss the complaint for lack of subject matter

jurisdiction on the grounds that there is no actual case or

controversy, as reguired by the Constitution, and the Declaratory

Judgment Act, 28 U.S.C. § 2201(a). For the following reasons,

the court concludes that there is an actual controversy related

to interpretation of the "assignment" provision within the

agreement between plaintiff and defendants, and, pursuant to

28 U.S.C. § 2201, the court is empowered to declare the rights

and legal relations of the parties with respect to the disputed

agreement. DISCUSSION

The following facts are alleged in the complaint.

Defendants developed certain technology used in the growth and

production of cultured animal cells. The parties refer to this

technology as the "stacked flat plate bioreactor." Through a

series of agreements, defendants allegedly "assigned" to Corning

the right to "apply for and secure world-wide patents" relating

to the flat plate bioreactor technology. Corning subseguently

filed for the various U.S. and foreign patents currently in

dispute.

Contrary to defendants' assertion. Corning is not seeking a

determination by the court related to future potential

infringement of the bioreactor patents. Rather, Corning asserts

that a justiciable controversy exists now, because it has raised

the issue of ownership.

It is well settled that "disputes involving ownership of

title to patents, or of licenses thereunder, have been held to

constitute actual controversy." Goodrich-Gulf Chemicals, Inc. v.

Phillips Petroleum Co., 376 F.2d 1015, 1019 (6th Cir. 1967); see

also, The D.L. Auld Co. v. Murfin, Inc., 1980 WL 30292, 208

U.S.P.Q. 508, 512 (S.D. Ohio 1980); Velsicol Chemical Corp. v.

Hooker Chemical Corp., 230 F. Supp. 998, 1016-17 (N.D. 111.

1964); Crook v. Bendix Aviation Corp., 68 F. Supp. 449 (D. Del.

1946). Because Corning predicates its entire claim on

interpretation of the "assignment" provision within the disputed

2 contract, the court finds that a justiciable controversy

currently exists under 28 U.S.C. § 2201.

The court notes, however, that an action to determine title

to a patent does not arise under "any Act of Congress relating to

patents." Therefore, it does not have original jurisdiction

under 28 U.S.C. § 1338(a). See Wilson v. Sandford, 51 U.S. 99,

101-102 (1850) .

Because this action arises in contract and presents no

federal guestion, the court may exercise subject matter

jurisdiction over Coming's claims only if diversity jurisdiction

exists. Corning asserts diversity jurisdiction under 28 U.S.C.

§ 1332, because neither defendant is a citizen of plaintiff's

state and the value of the matters in dispute — patent rights

associated with the bioreactor technology — exceeds the reguisite

jurisdictional amount. See Hunt v. Washington State Apple Advt'q

Comm' n , 432 U.S. 333, 347-48 (1977).

Because Corning is a citizen of New York and defendants are

citizens of New Hampshire, the court finds that complete

diversity exists. Moreover, because the value of the matters in

dispute does not appear from the pleadings, to a legal certainty,

to be less than the jurisdictional amount, the court has

diversity jurisdiction over this action under 28 U.S.C. § 1332.

See St. Paul Mercury Indemnity Co. v. Red Cab Co., 303 U.S. 283,

289 (1938) .

Defendants' motion to dismiss under Fed. R. Civ. P. 12(b)

for lack of subject matter jurisdiction is, therefore, denied.

3 SO ORDERED.

Steven J. McAuliffe United States District Judge

February 3, 1999

cc: Irvin i. Gordon, Esq. Daniel M. Gantt, Esq. Steven J. Grossman, Esq.