Despite 3D-Vision, Appellant Filed in the Wrong Court

Peter Sgromo v. Leonard Scott (Fed. Cir. 2022)

Sgromo owned two patents that he transferred to Scott’s company Eureka Inventions.  The two had what the courts call a “personal” relationship, and the transfer of rights was apparently done to “repay Scott for money he had given or loaned to [Sgromo] over the course of their relationship.”  Bestway (USA), Inc. v. Sgromo, 2018 WL 3219403 (N.D. Cal. July 2, 2018).  Sgromo then negotiated a license deal from a third-party, but that income was designated as coming to Eureka.

3D Pool Vision Pat. US7046440B1

When the two broke-off their relationship Sgromo wanted the patents back and sued.  An arbitrator sided with Scott, concluding that Sgromo did not own the patents.  A district court then confirmed the award, and Sgromo appealed.

On appeal now, the Federal Circuit has refused to hear the case — finding that  a patent ownership dispute does not “arise under” the patent laws. As such, the Federal Circuit does not have appellate jurisdiction. See, Gunn v. Minton, 568 U.S. 251 (2013) (patent attorney malpractice does not arise under the patent laws).

The court transferred the appeal to the Ninth Circuit.

 

7 thoughts on “Despite 3D-Vision, Appellant Filed in the Wrong Court

  1. 3

    This Peter Sgromo v. Leonard Scott decision by the Fed. Cir. that it does not have jurisdiction over patent ownership contract disputes is in interesting contrast to Fed. Cir. cases taking and deciding some patent ownership cases like Stamford based on their, rather than state law, interpretations of invention patent assignment [also ownership] contracts.

    1. 3.2

      Well, in Stanford v. Roche, the underlying claim was for patent infringement, so CAFC’s appellate jurisdiction was clearly proper there. Encompassed in that claim was a subsidiary issue of interpreting the invention assignment agreement, and that’s where choice of law issues arose.

      Here, the difference is the base claim is for confirmation of an arbitral award. That wouldn’t even be in federal court but for the happenstance that diversity of citizenship exists and the amount in controversy is satisfied. (According to the listing of parties, Sgromo now lives in Canada, while I assume Scott remains in California; the amount in controversy isn’t stated, but presumably it exceeded the threshold.) And it more or less goes without saying that the claim doesn’t arise under the federal patent laws either just because the dispute under arbitration happens to revolve around patent ownership. So absolutely no chance of CAFC appellate jurisdiction here.

  2. 2

    Off topic, but Judge Lourie (joined by Judge Cunningham) wrote some great stuff about the public having no inherent right to know licensing terms in today’s Uniloc v. Apple opinion. Not surprisingly, Judge Mayer dissented. He would have followed the EFF’s amicus arguments that the public has a “right” to such information.

  3. 1

    A simple enough decision that may serve to remind all that patent ownership – per se – is not a substantive patent law issue (reaffirming the foundational aspect that the property right of a patent has always been intended to be fully alienable).

Comments are closed.