Intellisoft, Ltd. v. Acer America Corp. ( 2020 )

Case: 19-1522 Document: 44 Page: 1 Filed: 04/03/2020
United States Court of Appeals
for the Federal Circuit
______________________
INTELLISOFT, LTD., A DELAWARE
CORPORATION,
Plaintiff/Counterclaim Defendant-Appellant
BRUCE BIERMAN, AN INDIVIDUAL,
Counterclaim Defendant-Appellant
v.
ACER AMERICA CORPORATION, A CALIFORNIA
CORPORATION, ACER INCORPORATED, A
TAIWAN CORPORATION,
Defendants/Counterclaimants-Appellees
______________________
2019-1522
______________________
Appeal from the United States District Court for the
Northern District of California in No. 4:17-cv-06272-PJH,
Judge Phyllis J. Hamilton.
______________________
Decided: April 3, 2020
______________________
AARON MARTIN PANNER, Kellogg, Hansen, Todd, Figel
& Frederick, P.L.L.C., Washington, DC, argued for plain-
tiff/counterclaim defendant-appellant and counterclaim
defendant-appellant. Also represented by COLLIN WHITE.
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2 INTELLISOFT, LTD. v. ACER AMERICA CORP.
MATTHEW GORDON BALL, K&L Gates LLP, San Fran-
cisco, CA, argued for defendants/counterclaimants-appel-
lees. Also represented by JASON NATHANIEL HAYCOCK;
THEODORE J. ANGELIS, JEFFREY CHARLES JOHNSON, Seat-
tle, WA; ANDREW SPIELBERGER, Balaban And Spielberger
LLP, Los Angeles, CA.
______________________
Before DYK, O’MALLEY, and CHEN, Circuit Judges.
DYK, Circuit Judge.
Intellisoft, Ltd. (“Intellisoft”) and its president Bruce
Bierman (collectively, “appellants”) sued Acer America
Corporation and Acer Inc. (collectively, “Acer”) in Califor-
nia state court, asserting various state law claims, includ-
ing misappropriation of trade secrets. After more than
three years of litigation, Acer sought to plead a patent in-
ventorship counterclaim under federal law and thereafter
removed the action to the United States District Court for
the Northern District of California. The district court de-
nied Intellisoft’s motion to remand and later entered final
judgment in favor of Acer.
We conclude that the district court erred by holding
that removal was proper under 28 U.S.C. §§ 1441 and
1454. We thus reverse the district court’s decision refusing
to remand, vacate the district court’s judgment, and re-
mand to the district court with instructions to remand the
action to California state court.
BACKGROUND
This case originated from a business relationship be-
tween the appellants and Acer dating back to the early
1990s. At that time, the appellants allegedly shared with
Acer trade secrets concerning computer power manage-
ment technology under a non-disclosure agreement
(“NDA”). According to the appellants, the NDA allowed
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INTELLISOFT, LTD. v. ACER AMERICA CORP. 3
Acer’s use of their “Confidential Information” only to “di-
rectly further” the evaluation of Intellisoft’s product for li-
censing and restricted Acer from “manufactur[ing] parts or
components incorporating the Confidential Information.”
J.A. 406; Appellants’ Br. 5. The appellants claim that they
discovered in the early 2010s that Acer had applied for a
patent that incorporated their trade secrets and became
the owner of U.S. Patent No. 5,410,713 (“the ’713 patent”).
The appellants concluded that Acer had misappropriated
their trade secrets and violated the NDA.
In March 2014, the appellants filed suit against Acer
in California state court, asserting that Acer misappropri-
ated their trade secrets by incorporating them into patent
applications that issued as the ’713 patent and three other
related patents (“the ’713 patent family”). 1 The complaint
also asserted that Acer unlawfully “incorporate[ed] [their]
Confidential Information, products, and/or technology in
Acer products without having a license.” J.A. 392. The
complaint alleged various other state law claims as well.
In May 2015, Bierman assigned his ownership interest
in the trade secrets to Intellisoft and dismissed his claims
in the state court action. On September 25, 2015, Intelli-
soft filed the operative Fourth Amended Complaint in state
court. On October 26, 2015, Acer filed an answer.
In September 2017, Intellisoft produced three expert
reports concerning liability and damages on the trade se-
cret claim. First, Intellisoft’s expert Irving Rappaport con-
cluded that “trade secret and confidential information
described in the [’]713 [patent] family . . . were created by
. . . Bierman,” J.A. 2213, and “[he] should have been named
[at least] as a co-inventor of the [’]713 patent,” J.A. 2237.
During his deposition, Mr. Rappaport stated that “this is
1 The three related patents are U.S. Patent Nos.
5,870,613; 5,884,087; and 5,903,765.
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4 INTELLISOFT, LTD. v. ACER AMERICA CORP.
not an inventorship dispute case. It just happens to be the
facts in this case.” J.A. 1794.
Second, Intellisoft’s expert Robert Zeidman opined that
“Intellisoft’s trade secrets were disclosed by Acer in the pa-
tent specifications,” pointing to the written description and
claims of the ’713 patent family as corresponding to various
aspects of the purported trade secrets. J.A. 2276. He also
concluded that Acer’s computer products could not comply
with the Advanced Configuration and Power Interface
(“ACPI”), an industry power management standard, with-
out using the technology disclosed in the ’713 patent fam-
ily. Because the ’713 patent family incorporated the trade
secrets, Mr. Zeidman concluded that the computer prod-
ucts “would [have] need[ed] to incorporate Intellisoft’s
trade secrets.” J.A. 2276–77.
Lastly, Intellisoft’s expert Brian Napper, relying on
Mr. Zeidman’s report, and assuming that all Acer comput-
ers complied with the ACPI industry standard and incor-
porated the trade secrets, calculated damages based on a
theory that Acer should have paid Intellisoft royalties for
using the trade secrets.
Trial was scheduled to begin in November 2017. On
October 30, 2017, Acer “e-filed” a “Cross-Complaint of Acer
Defendants for Declaratory Relief” against the appellants,
seeking a declaration that “Bierman properly was not
named as an inventor of any of the ’713 Family of Patents
and . . . is not entitled to an inventorship correction under
35 U.S.C. § 256.” J.A. 622. Referring to Mr. Rappaport’s
expert report and deposition, Acer alleged that “Bierman
[was] asserting an inventorship claim,” J.A. 624, and
sought declaratory relief that “Bierman properly was not
named as an inventor of [the ’713 patent family],” J.A. 622.
In California state court, a party may file a “cross-com-
plaint” setting forth a “cause of action he has against any
of the parties who filed the complaint . . . against him.”
Cal. Civ. Proc. Code § 428.10(a). Such a “cause of action”
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INTELLISOFT, LTD. v. ACER AMERICA CORP. 5
is equivalent to a counterclaim under the Federal Rules of
Civil Procedure Rule 13. Acer was required to “obtain leave
of court to file [the] cross-complaint” because it had already
filed its answer to Intellisoft’s complaint. See Cal. Civ.
Proc. Code § 428.50(c). The state court confirmed that
Acer’s “Cross-Complaint is considered lodged (pending ap-
proval of a stipulation & proposed order for filing of same,
or absent a stipulation & order, an ex parte application/or-
der).” J.A. 1388 (emphasis in original).
Also on October 30, 2017, Acer removed the action to
the United States District Court for the Northern District
of California under (1) 28 U.S.C. § 1441 providing removal
of an action which the district court would have original
jurisdiction and (2) 28 U.S.C. § 1454 providing removal of
an action where a party asserts a patent counterclaim. In
its Notice of Removal, Acer stated that section 1441 re-
moval was proper because Intellisoft’s state law claim for
trade secret misappropriation arose “under federal patent
law—specifically, 35 U.S.C. § 256.” 2 J.A. 303. Acer’s basis
for section 1441 removal was also Mr. Rappaport’s opinion
that “Bierman should have been named as an inventor” un-
der federal patent law. J.A. 302. Acer asserted that re-
moval was proper under section 1454 because its cross-
complaint alleged a patent inventorship claim. After re-
moval, on November 20, 2017, Acer filed a First Amended
Counterclaim, seeking a declaration under 35 U.S.C. § 256
that Bierman properly was not named an inventor of the
’713 patent family. Acer alleged that Intellisoft “intended
2 Intellisoft also pleaded claims for breach of con-
tract, intentional misrepresentation and fraudulent con-
cealment, and accounting in its Fourth Amended
Complaint. Acer argues only that the trade secret claim
raised a federal issue.
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6 INTELLISOFT, LTD. v. ACER AMERICA CORP.
to . . . try numerous other patent law issues, including pa-
tentability, patent validity, claim construction, and patent
infringement.” J.A. 1283.
On November 27, 2017, Intellisoft moved the district
court to remand the action to state court. Intellisoft argued
that there was no disputed federal issue because its state
law trade secret claim did “not require determination of in-
ventorship” under federal patent law and Acer’s cross-com-
plaint was not “[o]perative” due to Acer’s failure to obtain
leave of court. Intellisoft, Ltd. v. Acer Am. Corp., No. 17-
CV-06272 (N.D. Cal. 2017), ECF 21 at 2, 12, 20.
The district court denied Intellisoft’s motion to remand.
It held that section 1441 removal was proper because In-
tellisoft “ha[d] only advanced one theory of liability and
that theory necessarily raise[d] substantial patent law is-
sues,” J.A. 16, and the case “boil[ed] down to an inventor-
ship dispute,” J.A. 12. The district court concluded that
“the inventorship issue [wa]s not just an alternate theory
that [the] plaintiff might [have] use[d] to show liability and
damages” but was the “only theory of its case.” J.A. 10.
The district court also held that section 1454 removal was
proper, reasoning that the statute did not require the pa-
tent counterclaim to be pleaded in an operative pleading
and that it did not matter “[w]hether or not defendants’
cross-complaint was allowed by the [state] court.” J.A. 17–
18.
Having declined to remand the case to state court, in
December 2018, the district court granted summary judg-
ment in favor of Acer with respect to Intellisoft’s state law
claims, reasoning that Intellisoft failed to prove under fed-
eral patent law that Bierman was the inventor of the
’713 patent family claims. Based on this failure, the dis-
trict court concluded that Intellisoft could not show trade
secrets ownership and damages. It also held that the
claims were time barred. The parties thereafter stipulated
to an entry of judgment on the inventorship counterclaim
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INTELLISOFT, LTD. v. ACER AMERICA CORP. 7
in favor of Acer. In February 2019, the district court en-
tered final judgment in favor of Acer based on its summary
judgment on Intellisoft’s state law claims and the parties’
stipulation regarding Acer’s inventorship counterclaim.
The appellants appeal, arguing that removal was im-
proper and seeking a remand to state court. We have ju-
risdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
I. Section 1441 Removal
We first consider whether removal was proper under
section 1441. That section generally provides that “any
civil action brought in a State court of which the district
courts of the United States have original jurisdiction, may
be removed by the defendant or the defendants, to the dis-
trict court of the United States.” 28 U.S.C § 1441(a). Sec-
tion 1338(a) of Title 28 provides in part that the “district
courts shall have original jurisdiction of any civil action
arising under any Act of Congress related to patents.” The
propriety of section 1441 removal depends here on whether
Intellisoft’s state law claims could be brought in federal
court pursuant to section 1338. We review de novo
whether the district court had section 1338 jurisdiction,
and apply Federal Circuit law. Microsoft Corp. v. GeoTag,
Inc., 817 F.3d 1305, 1311 (Fed. Cir. 2016).
When a plaintiff brings only a state law claim, as here,
the district court will have original jurisdiction “over [the]
state law claim . . . if a federal issue is: (1) necessarily
raised, (2) actually disputed, (3) substantial, and (4) capa-
ble of resolution in federal court without disrupting the fed-
eral-state balance approved by Congress.” Gunn v. Minton,
568 U.S. 251, 258 (2013). The Supreme Court has ex-
plained that only a “special and small category” of cases
would meet all four requirements. Id. (quoting Empire
Healthchoice Assurance, Inc. v. McVeigh, 547 U.S. 677, 699
(2006)).
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8 INTELLISOFT, LTD. v. ACER AMERICA CORP.
Addressing the first prong in the Gunn test, Acer con-
tends that Intellisoft’s trade secrets misappropriation
claim necessarily raised patent law issues: (1) Intellisoft
had to prove Bierman is the sole inventor of the ’713 patent
family to establish ownership of the trade secrets and (2)
Intellisoft’s expert offered a claim construction and in-
fringement analysis with respect to the ’713 patent family
to show liability and damages.
Acer’s arguments do not establish that Intellisoft’s
trade secret claim necessarily raised patent law issues.
First, Intellisoft did not need to prove inventorship under
federal law to establish ownership. Although Intellisoft’s
expert Mr. Rappaport stated that Bierman was an inventor
of the claims in the ’713 patent family as a factual matter,
Intellisoft did not need to prove that statement was true
but needed to show only that Intellisoft by assignment from
Bierman was the owner of the trade secrets. In other
words, Intellisoft’s burden was to satisfy the ownership
standards for trade secrets under California law rather
than to prove that Bierman is the inventor of the ’713 pa-
tent family, and ownership under state law did not require
proof of patent inventorship. The ownership issue thus did
not necessarily depend on patent laws.
Second, Intellisoft did not need to establish patent in-
fringement to prove trade secrets misappropriation. Here,
Intellisoft’s expert Mr. Zeidman compared the trade secret,
’713 patent family, and ACPI standard to conclude that
Acer misappropriated the trade secrets by incorporating
them into the patents and Acer “would [have] need[ed] to
incorporate [the] trade secrets” into its products to comply
with the ACPI, a standard by itself that incorporated the
trade secrets disclosed by the patents. J.A. 2277. Intelli-
soft had to show only that Acer misappropriated (“used” or
“disclosed”) the trade secrets under California state law.
See Cal. Civ. Code § 3426.1. The ’713 patent family was
only being used as evidence to support Intellisoft’s state
law claims. This analysis required no construction of the
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INTELLISOFT, LTD. v. ACER AMERICA CORP. 9
patent claims or proof that Acer’s products “infringed” the
’713 patent family under 35 U.S.C. § 271.
Third, Intellisoft’s damages case did not necessarily de-
pend on the resolution of patent law issues. Its expert Mr.
Napper calculated damages in the form of royalties that In-
tellisoft would have received from Acer for using the trade
secrets since 1997, assuming a royalty rate from the par-
ties’ 1992 software agreement. But this agreement was a
software license for Intellisoft’s Bookmark product and it
neither included a patent license nor referenced the ’713
patent family. Mr. Napper’s damages calculation also pre-
sumed that Acer’s products incorporated the trade secrets
based on Mr. Zeidman’s analysis. To prove such damages,
however, Intellisoft did not need to establish that Acer’s
products infringed the ’713 patent family. Thus, the dam-
ages issue also did not necessarily depend on the resolution
of patent law issues.
We have made clear that a plaintiff’s reliance on a pa-
tent as evidence to support its state law claims does not
necessarily require resolution of a substantial patent ques-
tion.
In Uroplasty, Inc. v. Advanced Uroscience, Inc., 239
F.3d 1277 (Fed. Cir. 2001), the plaintiff alleged that its for-
mer executive officer, who became the defendant’s chair-
man, “used and divulged [the plaintiff’s] trade secrets . . .
by acts that included the preparation and filing of [the de-
fendant’s patent] application.” Id. at 1279–80. We held
that “[t]he . . . patent may be evidence in support of [the
plaintiff’s] allegations, but the mere presence of the patent
does not create a substantial issue of patent law.” Id. at
1280. Thus, the plaintiff’s reliance on a patent to prove
misappropriation of trade secrets did not “necessarily de-
pend[] on resolution of a substantial question of federal pa-
tent law.” Id. at 1279–80 (quoting Christianson v. Colt
Indus. Operating Corp., 486 U.S. 800, 809 (1988)). We have
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10 INTELLISOFT, LTD. v. ACER AMERICA CORP.
reached similar conclusions in other cases. See Bd. of Re-
gents, Univ. of Tex. Sys., ex rel. Univ. of Tex. at Austin v.
Nippon Tel. & Tel. Corp., 414 F.3d 1358, 1362–63, 1365
(Fed. Cir. 2005) (state law claim of tortious interference did
not necessarily require resolution of a federal patent law
issue just because the plaintiff sought to show ownership
of information incorporated into its U.S. patent); Krauser
v. BioHorizons, Inc., 753 F.3d 1263, 1265–67, 1269 (Fed.
Cir. 2014) (state law claim of ownership of the defendants’
dental systems allegedly incorporated in the defendants’
patents did not depend on resolution of a federal patent law
issue); id. at 1269 (“A claim of ownership does not neces-
sarily require consideration of patent law inventorship.”
(emphasis in original)).
The Tenth Circuit likewise held that using a patent as
evidence for a misappropriation claim does not give rise to
section 1338 jurisdiction in Russo v. Ballard Med. Prod.,
550 F.3d 1004 (10th Cir. 2008). In Russo, the plaintiff al-
legedly shared trade secrets concerning catheter devices
with the defendants under a confidential disclosure agree-
ment. Id. at 1007–08. The plaintiff asserted that the de-
fendants’ patents misappropriated his trade secrets. Id. at
1010. The court held that “the fact that patents may be
used as evidence in aid of a trade secret claim is not the
same thing as raising a substantial (or really, any) question
of federal patent law.” Id. (citing Uroplasty, 239 F.3d at
1280).
Because Intellisoft’s trade secret claim did not “neces-
sarily depend[] on resolution of a substantial question of
federal patent law,” Uroplasty, 239 F.3d at 1279 (quoting
Christianson, 486 U.S. at 809), we need not address other
prongs of the Gunn test. The district court did not have
jurisdiction under section 1338(a), and the state law claims
could not be removed under section 1441.
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INTELLISOFT, LTD. v. ACER AMERICA CORP. 11
II. Section 1454 Removal
Acer alternatively claims that removal was proper un-
der section 1454 because of its inventorship counterclaim.
Section 1454 provides:
A civil action in which any party asserts a claim for
relief arising under any Act of Congress relating to
patents, plant variety protection, or copyrights
may be removed to the district court of the United
States for the district and division embracing the
place where the action is pending.
28 U.S.C. § 1454(a). We review de novo and apply Federal
Circuit law on whether removal was proper under sec-
tion 1454. See GeoTag, 817 F.3d at 1311.
Acer argues that the language “action in which any
party asserts a claim for relief” of section 1454 did not re-
quire it to plead the counterclaim in an operative cross-
complaint. According to Acer, what matters is that the
cross-complaint was purportedly “filed”—received by the
state court—regardless of whether it was legally operative.
We disagree.
We conclude that removal under section 1454, like re-
moval under section 1441, requires that the claim support-
ing removal must be contained in an operative pleading.
Section 1441 allows removal if an action over which the dis-
trict court would have original jurisdiction was “brought”
in the state court. Courts have held that a claim is
“brought” under section 1441 only after the claim support-
ing federal jurisdiction is pleaded in an operative com-
plaint as opposed to a proposed amendment. Sullivan v.
Conway, 157 F.3d 1092, 1094 (7th Cir. 1998) (“Until the
state judge granted the motion to amend, there was no ba-
sis for removal. Until then, the complaint did not state a
federal claim. It might never state a claim, since the state
judge might deny the motion.”); Freeman v. Blue Ridge Pa-
per Prod., Inc., 551 F.3d 405, 410 (6th Cir. 2008).
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12 INTELLISOFT, LTD. v. ACER AMERICA CORP.
It is evident that “assert” in section 1454 has the same
meaning as “brought” in section 1441. In section 1441,
Congress provided that “[o]nly defendants against whom a
[federal claim] has been asserted are required to join in or
consent to the removal.” 28 U.S.C. § 1441(c)(2) (emphasis
added). Thus, section 1441 itself uses the word “asserted”
as equivalent to the term “brought.” Similarly, many other
statutes assume that the “brought” language means that
the claim giving arise to jurisdiction was asserted. See,
e.g., 35 U.S.C. § 271(e)(5) (federal courts have “subject mat-
ter jurisdiction in any action brought” under certain Hatch-
Waxman provisions); 19 U.S.C. § 1337(f)(2) (the govern-
ment may recover penalty in “a civil action brought” by the
International Trade Commission); 28 U.S.C.
§ 1332(d)(1)(B), (3)(D) (class action definition and exercise
of jurisdiction concern an action “brought” by one or more
representatives). We conclude that removal based on an
“asserted” claim for relief under section 1454 requires that
it must be included in an operative pleading.
A contrary interpretation would mean that the defend-
ant’s time to file a notice of removal would begin to run
even if the claim had no effect because it was yet to be made
part of the case, and would “have the anomalous effect that
the removed case lacks federal jurisdiction at the time that
it is removed.” Freeman, 551 F.3d at 410; Carvalho v.
Equifax Info. Servs., LLC, 629 F.3d 876, 885 (9th Cir. 2010)
(“It is axiomatic that a case cannot be removed before its
inception.”); Reyes v. Dollar Tree Stores, Inc., 781 F.3d
1185, 1189 (9th Cir. 2015) (tentative class certification rul-
ing had no “jurisdictional effect”). Consistent with this
view, we have held that the defendant’s right to removal
depends on the “pleading operative at the time” of removal
and not on later amendments. Bd. of Regents, 414 F.3d at
1360 n.* (citing Pullman Co. v. Jenkins, 305 U.S. 534, 537
(1939)); see also Abada v. Charles Schwab & Co., 300 F.3d
1112, 1117 (9th Cir. 2002).
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INTELLISOFT, LTD. v. ACER AMERICA CORP. 13
Here, Acer’s cross-complaint was not a legally opera-
tive pleading when it removed the action. Under California
law, Acer could have filed the cross-complaint as a matter
of right before or at the same time as its answer to the com-
plaint. Cal. Civ. Proc. Code § 428.50(a). But, after that
time, Acer was required to “obtain leave of court to file [the]
cross-complaint.” Id. § 428.50(c). California courts have
held that a pleading was “ineffective” where the party seek-
ing to file the pleading did not obtain the required leave of
court. People v. Oken, 324 P.2d 58, 61 (Cal. Ct. App. 1958);
see also Morrow v. Carona, No. E030000, 2002 WL
1832899, at *2 (Cal. Ct. App. Aug. 12, 2002) (unpublished).
Acer admits that the cross-complaint was not legally oper-
ative under state law and it would have “needed leave to
amend to file the counterclaim.” Oral Argument 22:15–21,
available at http://oralarguments.cafc.uscourts.gov/de-
fault.aspx?fl=2019-1522.MP3. The district court itself
agreed that “[Acer’s] cross-complaint did not become oper-
ative . . . under the California Code of Civil Procedure.” J.A.
4. Because Acer’s cross-complaint was not operative, it was
never “asserted” under section 1454 and thus there was no
basis for removal.
We reach our conclusion by looking at state law not to
interpret the patent statute but to determine whether a
party satisfied the criteria set forth in that statute. This
approach is consistent with Shamrock Oil & Gas Corp. v.
Sheets, 313 U.S. 100 (1941), which concerned an earlier and
different statute, § 28 of the Judiciary Code, 3 that allowed
“the defendant or defendants” to remove based on diversity
jurisdiction. Id. at 103–04. There the Supreme Court held
that the word “defendant” was to be construed under Con-
gress’s “own criteria, irrespective of local law,” and that its
meaning excluded the plaintiff who initiated the action
3 This statute was codified as 28 U.S.C. § 71 at that
time.
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14 INTELLISOFT, LTD. v. ACER AMERICA CORP.
even if a counterclaim was asserted against him. Id. at
104, 108. Similarly, here we construe “assert” in sec-
tion 1454 under Congress’s criteria irrespective of how
state courts would interpret that word.
Treating an inoperative patent counterclaim as not be-
ing “asserted” is consistent with Congressional policy.
Congress intended to keep claims arising under patent
laws out of state court proceedings by conferring jurisdic-
tion to only federal courts. See 28 U.S.C. § 1338(a). Deny-
ing leave to file a federal patent counterclaim in state court
is fully consistent with the policy that patent claims should
not be litigated in state courts. Any refusal to entertain
federal patent claims in state court would serve the pur-
pose of limiting state court jurisdiction over federal patent
claims. We note that if the state court denied leave to file
the patent counterclaim, Acer would still not have been de-
prived of its claim because it had “an alternative way to
present [its] patent claim[] on the merits in federal court: a
separate federal declaratory judgment action.” Preston v.
Nagel, 857 F.3d 1382, 1386 (Fed. Cir. 2017).
As an alternative ground, Acer argues that its
amended counterclaim filed in federal court after removal
satisfied section 1454. There is no merit to this argument
because we have repeatedly held that “[i]t is only the plead-
ing operative at the time the petition to remove was filed
. . . that is relevant to determining [the] right to remove[,]”
not later amendments. Bd. of Regents, 414 F.3d at 1360
n.* (discussing §§ 1338 and 1441 removal); Air Measure-
ment Techs., Inc. v. Akin Gump Strauss Hauer & Feld,
L.L.P., 504 F.3d 1262, 1268 n.8 (Fed. Cir. 2007) (same); see
also Additive Controls & Measurement Sys., Inc. v. Flow-
data, Inc., 986 F.2d 476, 477 (Fed. Cir. 1993). Section 1454
includes no language that justifies a treatment different
from other removal statutes.
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INTELLISOFT, LTD. v. ACER AMERICA CORP. 15
Accordingly, we hold that Acer’s removal under sec-
tion 1454 was improper because the October 30, 2017,
cross-complaint was not legally operative.
CONCLUSION
For the foregoing reasons, we vacate the district court’s
judgment and reverse its denial of Intellisoft’s motion to
remand. We need not resolve the question of whether re-
moval was timely. On remand, the district court must re-
mand the action to California state court. 4
VACATED, REVERSED, AND REMANDED
COSTS
Costs to the appellants.
4 In ordering remand to state court, we, of course, do
not express any opinion concerning the merits of Intelli-
soft’s state law claims.