The opinion of the court was delivered by: Maurice B. Cohill, Jr., Senior United States District Judge.
Memorandum Opinion and Order
For the reasons set forth below, we are satisfied that we have subject
matter jurisdiction over this matter and that it has been properly
removed to this court.
Defendants PSC Scanning, Inc. ("PSC"), and Telxon Corporation
("Telxon") manufacture hand-held laser devices which are used to scan bar
codes on merchandise. MRK Technologies, Ltd. ("MRK"), distributes Telxon
equipment. Plaintiff 84 Lumber Company ("84 Lumber") purchased equipment
from these companies (collectively "the defendants"), to use in its bar
code scanning system. Subsequently, 84 Lumber was one of a number of
defendants sued for patent infringement by the Lemelson Medical,
Education & Research Foundation, LP ("Lemelson"), in the United States
District Court for the District of Arizona (the "Lemelson Suit").
84 Lumber settled the Lemelson Suit for forty thousand dollars. It then
filed a one count complaint against the defendants in the Court of Common
Pleas of Washington County, Pennsylvania, alleging breach of the implied
warranty against infringement, 13 Pa.C.S.A. § 2312(c), and seeking
monetary damages in the amount of the settlement.
Defendants timely filed a notice of removal in this Court, asserting
federal jurisdiction under 28 U.S.C. § 1331, 1338, and 1441. Mindful
of our responsibility to ascertain our own jurisdiction, we ordered
briefs and heard argument on whether or not we have jurisdiction over the
plaintiffs' claims. Plaintiff contends that we are without subject matter
jurisdiction, and that the action must be remanded to state court.
Since jurisdiction is asserted based upon 28 U.S.C. § 1338, the law
of the Federal Circuit controls this case. Panduit Corp. v. All States
Plastic Manufacturing Co., 744 F.2d 1564, 1573 (Fed. Cir. 1984). The
statute provides, in pertinent part, that "[t]he district courts shall
have original jurisdiction of any civil action arising under any Act of
Congress relating to patents .Such jurisdiction shall be exclusive of the
courts of the states in patent cases." 28 U.S.C. § 1338(a).*fn1
In Christianson v. Colt Industries Operating Corp., 486 U.S. 800
(1988), the United States Supreme Court addressed the question of when a
case arises under federal patent law:
[I]n order to demonstrate that a case is one "arising
under" federal patent law "the plaintiff must set up
some right, title or interest under the patent laws, or
at least make it appear that some right or privilege
will be defeated by one construction, or sustained by
the opposite construction of these laws."
Christianson, 486 U.S. at 807 (citations omitted).
In any civil action, a district court's federal-question jurisdiction
extends over "only those cases in which a well-pleaded complaint
establishes either that federal law creates the cause of action or that
the plaintiff's right to relief necessarily depends on resolution of a
substantial question of federal law," in that "federal law is a necessary
element of one of the well-pleaded . . . claims." Franchise Tax Board of
California v. Construction Laborers Vacation Trust, 463 U.S. 1, 27-28
(1983). Under the well-pleaded complaint rule, as adapted to §
1338(a), "jurisdiction likewise 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 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, 486 U.S. at 809 (citations omitted).
Whether a claim "arises under" patent law "must be determined from what
necessarily appears in the plaintiff's 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."
Christianson, 486 U.S. at 809 (citations omitted). For that reason, a
case raising a federal patent law defense does not arise under patent
law, "even if the defense is anticipated in the plaintiff's complaint,
and even if both ...