June 2013

Spotlight Info

In Forrester Environmental Services, Inc. v. Wheelabrator Technologies, Inc., No. 12-1686 (Fed. Cir. May 16, 2013), the Federal Circuit vacated and remanded the district court’s grant of SJ on tort law claims involving questions of patent law, because the district court lacked subject matter jurisdiction under 23 U.S.C. § 1338.  The Federal Circuit reasoned that for a state law cause of action to qualify for jurisdiction under § 1338, it must “involve[] a patent law issue that is ‘(1) necessarily raised, (2) actually disputed, (3) substantial, and (4) capable of resolution in federal court without disrupting the federal-state balance approved by Congress.’”  Slip op. at 6-7 (quoting Gunn v. Minton, 133 S. Ct. 1059, 1065 (2013)).  The Court concluded that “even if the allegations contained in [the] complaint necessarily
raise[d] a question of patent law, the patent law issues [were] not ‘substantial in the relevant sense’ under Gunn,” id. at 12 (quoting Gunn, 133 S. Ct. at 1066), because any potential federal-state conflict was “purely ‘hypothetical,’” id. at 10 (quoting Gunn, 133 S. Ct. at 1067).  See this month’s edition of Last Month at the Federal Circuit for a full summary of this decision.