McArdle v. Bornhofft

980 F. Supp. 68, 44 U.S.P.Q. 2d (BNA) 1470, 1997 U.S. Dist. LEXIS 14796
CourtDistrict Court, D. Maine
DecidedSeptember 26, 1997
DocketCiv. No. 97-138-B
StatusPublished
Cited by4 cases

This text of 980 F. Supp. 68 (McArdle v. Bornhofft) is published on Counsel Stack Legal Research, covering District Court, D. Maine primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
McArdle v. Bornhofft, 980 F. Supp. 68, 44 U.S.P.Q. 2d (BNA) 1470, 1997 U.S. Dist. LEXIS 14796 (D. Me. 1997).

Opinion

ORDER AND MEMORANDUM OF DECISION

BRODY, District Judge

Plaintiffs, Blaise Lee McArdle (“McArdle”) and VPP Corporation (‘VPP”), originally brought this action against Defendant, Henry J. Bornhofft (“Bornhofft”), in the Kennebec County Superior Court of the State of Maine on May 23, 1997, alleging breach of contract, defamation, and tortious interference with prospective economic advantage. Defendant subsequently removed the case to this Court on the grounds that Plaintiffs alleged patent infringement claims over which this Court has exclusive jurisdiction pursuant to 28 U.S.C. § 1338. Defendant filed a Motion to Dismiss or, in the alternative, for Change of Venue. Plaintiffs filed a Motion to Remand to the state court. Because this Court lacks jurisdiction over Plaintiffs’ claims, Plaintiffs’ Motion to Remand is GRANTED and this case is hereby REMANDED to the Kennebec County Superior Court.

DISCUSSION

Section 1338(a) provides: “The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents____” 28 U.S.C. § 1338(a). 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 a 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, 808-09, 108 S.Ct. 2166, 2174, 100 L.Ed.2d 811 (1988). Under the well-pleaded complaint rule, “whether a claim ‘arises under’ patent law ‘must be determined from what necessarily appears in the plaintiffs statement of his own claim in the bill or declaration, unaided by anything alleged in anticipation or avoidance of defenses which it is thought the defendant may interpose.” Id. at 809,108 S.Ct. at 2174 (quoting Franchise Tax Board of California v. Construction Laborers Vacation Trust, 463 U.S. 1, 10, 103 S.Ct. 2841, 2846, 77 L.Ed.2d 420 (1983); see also Taylor v. Anderson, 234 U.S. 74, 75-76, 34 S.Ct. 724, 724-25, 58 L.Ed. 1218 (1914); Xeta. Inc. v. Atex. Inc., 825 F.2d 604, 606 (1st Cir.1987)). “If ‘on the face of a well-pleaded complaint there are ... reasons completely unrelated to the provisions and purposes of [the patent laws] why the [plaintiff] may or may not be entitled to the relief it seeks,’ then the claim does not arise under those laws.” Christianson, 486 U.S. at 810, 108 S.Ct. at 2174 (quoting Franchise Tax Board, 463 U.S. at 26, 103 S.Ct. at 2855) (citations omitted). “[F]ederal jurisdiction ‘must be rejected if there is any [71]*71doubt as to the right of removal in the first instance.’ ” Duncan v. Stuetzle, 76 F.3d 1480, 1485 (9th Cir.1996) (quoting Gaus v. Miles, Inc., 980 F.2d 564, 566 (9th Cir.1992)).

Ultimately, “the plaintiff is master of its own claim and can choose to keep its suit in state court if its well-pleaded complaint does not affirmatively rely on federal law.” Allstate Ins. Co. v. 65 Sec. Plan, 879 F.2d 90, 93 (3d Cir.1989); see also Brough ¶. United Steelworkers óf America, 437 F.2d 748, 749 (1st Cir.1971). It is true that a plaintiff may not defeat removal through “artful pleading” by “‘characteriz[ing] his necessarily federal cause of action solely in state law terms’ or ‘fail[ing] to make specific reference ... to a source of federal law that clearly is applicable.’” Patriot Cinemas. Inc. v. General Cinema Corp.,834 F.2d 208, 209 n. 1 (1st Cir.1987) (quoting 14A C. Wright, A. Miller & E. Cooper, Federal Practice & Procedure § 3722, at 243, 276 (1985)); see also Hunneman Real Estate Carp. v. Eastern Middlesex Assoc. of Realtors, Inc., 860 F.Supp. 906, 909 (D.Mass. 1994). However, “[b]ecause state and federal laws have many overlapping or even identical remedies and because generally we respect a plaintiff’s choice between state and federal forums, this exception to the well-pleaded complaint rule is necessarily a narrow one.” In re Agent Orange Product Liability Litigation, 996 F.2d 1425, 1430 (2d Cir.1993).

Federal patent law does not create Plaintiffs’ breach of contract, tortious interference, or disparagement claims. Therefore, for this Court to have jurisdiction, Plaintiffs’ right to relief on one or more of their claims must “necessarily depend on a resolution of a substantial question of federal patent law.” Christianson, 486 U.S. at 809, 108 S.Ct. at 2174.

Plaintiffs allege five counts consisting of three different common law causes of action: breach of contract, defamation, and tortious interference. The Court addresses each cause of action in turn.

A. BREACH OF CONTRACT CLAIMS

First, the Court addresses Plaintiffs’ breach of contract claims. In Count I, Plaintiff McArdle alleges that Defendant breached a Privacy Agreement allegedly entered into by Plaintiff McArdle and Defendant on August 27, 1995. This Privacy Agreement prohibits Defendant from revealing information relating to, or applying for a patent for “a process and product which combines the vegetable protein zein with other products to produce a substance commonly referred to as VPP,” purportedly developed by Plaintiff McArdle. (Defs Mot. Dismiss Ex. A). The agreement imposes obligations of “privacy, secrecy, confidentiality and restraint in patent applications,” and makes no mention of patent infringement. Id. At the time the agreement was signed, Defendant did not have a patent for VPP. Plaintiff McArdle alleges in his Complaint that Defendant violated the Privacy Agreement by improperly disclosing confidential information. Resolution of whether or not Defendant disclosed confidential information in violation of the Privacy Agreement -in no way implicates a question of federal patent law. See Royal v. Leading Edge Products, Inc., 833 F.2d 1, 4 (1st Cir.1987) (quoting Combs v. Plough, Inc., 681 F.2d 469, 470 (6th Cir.1982)) (noting the “usual rule” that “ ‘where an action is brought to enforce, set aside, or annul a contract, the action arises out of the contract, and not under the patent laws, even though the contract concerns a patent right’ ”).

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Bluebook (online)
980 F. Supp. 68, 44 U.S.P.Q. 2d (BNA) 1470, 1997 U.S. Dist. LEXIS 14796, Counsel Stack Legal Research, https://law.counselstack.com/opinion/mcardle-v-bornhofft-med-1997.