Memorylink Corp. v. Motorola, Inc. , 419 F. App'x 991 ( 2011 )

NOTE: This order is nonprecedentia1.
United States Court of AppeaIs
for the FederaI Circuit
MEMORYLINK CORP.,
Plointiff-Appellant,
V.
MOTOROLA, INC., JONATHAN P. MEYER, HUGH
C. DUNLOP, THOMAS G. BERRY, J. RAY WOOD,
AND TERRI S. HUGHES,
` Defendants-Appellees.
win 77 7 §
2010-1533
Appea1 from the Uni1;ed States District Court for the
Northern District of I11inois in case no. 09-CV-'7401, Judge
Wi11iam J. Hibb1er.
ON MOTION
Before RADER, Chief Judge.
0 R D E R
Motorola, Inc. et a1. (Motoro1a) move to transfer this
appeal to the United States Court of Appea1s for the Sev-
enth Ci1'cuit. Mem01'y]in.k Co1'p. opposes transfer Mo-
t0ro1a replies
MEMORYLIN`K CORP V. MOTOROLA 2
Based upon our review of the papers submitted, it ap-
pears that the district court's jurisdiction over this legal
malpractice action arose in part under 28 U.S.C. § 1338and thus our jurisdiction is proper. Although a claim for
relief may be denied on non-patent grounds as it was here,
to determine the district court's jurisdiction and our own
jurisdiction we must look to what the plaintiff would be
required to prove to prevail on the claim for relief. See
David v. Brouse McDowell, L.P.A., 596 F.3d 1355, 1361-62
(Fed. Cir. 2010) (deber1nining district coLu't's jurisdiction
based upon what the plaintiff would have to prove to
prevail in a legal malpractice action).
Here, Men10rylink’s complaint sought to correct the in-
ventorship of the “Secret Patent," which would have re-
quired Memory]ink to prove, inter alia, that certain
individuals were and/or other individuals were not the
actual inventors in order to prevail on its claim. Although
patent ownership might not necessarily raise ah issue of
patent law, patent inventorship does. Shum v. Intel Corp.,
633 F.3d 1067, 1076 n.4 (Fed. Cir. 2010) (state law claims
involving patent law issue of inventorship gave district
court subject matter jurisdiction under 28 U.S.C. § 1338).
We therefore deny the motion without prejudice to the
parties continuing to address the jurisdictional issue to the
merits panel.
Accordingly,
lT IS ORDERED THAT!
(1) The motion is denied without prejudice to the par-
ties raising the jurisdictional issue in the briefs.
(2) Memorylink’s opening brief is due within 40 days
from the date of filing of this order.
3 MEMoRYL1NK coRP v. MoroRoLA
FoR THE CoURr
HAY 0 2 mm /s/ Jan Horbaly
Date J an Horbaly
Clerk
cc: Paul Eugene Schaafsma, Esq.
Anne l\/I. Sidrys, Esq.
. FlLED
u.s. com or appeals F0R
519 ms FEoERAL c1Rcu1r
l'?AY 02 2011
JANHORBAL¥
CLERK