Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Inspired Development Group v. Inspired Products Group

For Jurisdictional Purposes, State Law Claims Relating to Contractual Breach Present No Federal Question

Inspired Development Group v. Inspired Products Group, __ F.3d __, 2019 WL 4458568 (Fed. Cir. Sept. 18, 2019) (PROST, Newman, Stoll) (S.D. Fla.: Rosenberg) (2 of 5 stars)

Fed Cir vacates summary judgment for KidsEmbrace (the business name of Inspired Products Group) on various state law claims (generally, Florida contract claims seeking past due royalties) and remands for dismissal for lack of subject matter jurisdiction. Inspired Development’s claims did not “arise under” federal patent law. First, per Wawrzynski, 728 F.3d 1374 (Fed. Cir. 2013), Inspired Development’s claims assert no cause of action created by federal patent law. The opinion reasons that Inspired Development’s pleading of an unjust enrichment claim was not a “free-standing claim for patent infringement.” Op. at 9. Second, Inspired Development’s claims were not in the category of special state claims held to “arise under” federal law due to a “serious federal interest” in federal court adjudication, applying the test in Gunn, 568 U.S. 241 (2013). The opinion discusses how the question of infringement is not a necessary element of Inspired Development’s unjust enrichment claim. It acknowledges that KidsEmbrace “actually disputed” whether it practiced any Inspired Development Patent. It determines that the case does not present a “substantial” federal issue for purposes of the Gunn test, applying the analysis from NeuroRepair, 781 F.3d 1340 (Fed. Cir. 2015). Jang, 767 F.3d 1334 (2014), is not contradictory, and the opinion describes how Jang addressed issues of federal appellate jurisdiction and the role of the Fed Cir therein. The risks of conflict in resolution of patent questions that Jang addressed has minimal applicability in the context of state courts, which may not invalidate patents, and whose determinations of validity have no precedential effect in federal district court. The opinion also rejects KidsEmbrace’s argument that Gunn is inapplicable here because Gunn’ discussion of how patent issues may affect a “case within a case” applies to KidsEmbrace’s theory of patent issues in Inspired Development’s unjust enrichment claims. Finally, the opinion reasons that exercising federal jurisdiction would upset the balance of federal and state judicial responsibilities, as described in Grable, 545 U.S. 308 (2005).

None of Inspired Development’s other claims could confer federal question jurisdiction, either. The district court is instructed to dismiss the case on remand.

KEYWORDS: CIVIL PROCEDURE; SUBJECT-MATTER JURISDICTION; FEDERAL QUESTION; ARISING UNDER