Thus, the two claims (breach of implied contract and breach of fiduciary duty) brought by the plaintiff in this case clearly derive from state law. See Am. Tel. & Tel. Co. v. Integrated Network Corp., 972 F.2d 1321, 1324 (Fed.Cir.1992)(holding that the breach of contract and breach of fiduciary duty claims relating to ownership of patent rights are governed by state law, not patent law); Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403, 407 (Fed.Cir.1996) (applying state law to an implied-in-fact contract claim). Moreover, generally, claims regarding patent ownership are determined exclusively under state law, and are not governed by patent laws. Gianelli v. Chirkes, 204 Fed.Appx. 24, 24 (D.C.Cir.2006)(citing Int'l Nutrition Co. v. Horphag Research Ltd., 257 F.3d 1324, 1329 (Fed.Cir.2001)); Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567, 1572 (Fed.Cir.1997).
Where a plaintiff has pled alternative grounds for relief, some of which do not rely on federal law, assertion of federal jurisdiction is improper. Christianson, 486 U.S. at 810 ("a claim supported by alternative theories in the complaint may not form the basis of § 1338(a) jurisdiction unless patent law is essential to each of those theories"); Rains v. Criterion Systems, Inc., 80 F.3d 339, 346 (9th Cir. 1996) (same, holding federal jurisdiction improper in a suit for discrimination, where plaintiff has alleged both state and federal theories); Am. Tel. Tel. Co. v. Integrated Network Corp., 972 F.2d 1321, 1324 (Fed. Cir. 1992) (§ 1338(a) jurisdiction improper on a case for unlawful use of trade secrets, where the alleged trade secrets could have included non-patentable, as well as patentable, inventions); Conroy v. Fresh Del Monte Produce, Inc., 325 F. Supp. 2d 1049, 1056 (N.D. Cal. 2004) (§ 1338(a) jurisdiction improper where plaintiff had alleged, inter alia, violations of the UCL based on defendants' misrepresentations made to the public about a patented product; the plaintiff could receive relief on every claim without an inquiry into the enforceability of the patent);Altavion v. Konica-Minolta Sys. Lab., Inc., No. C-07-06358-MHP, 2008 WL 2020593 at *4-*5 (N.D. Cal. May 8, 2008) (plaintiff's fraud claim did not meet the second prong of Christianson because, although one theory of the claim would have required a determination of the inventor of a patented technology, there were alternate, non-federal theories pled that would allow plaintiff to succeed in its fraud claim). Lippitt v. Raymond James Fin.
Additionally, there are other Federal Circuit cases that are more closely analogous to the present case. In ATT v. Integrated Network Corp., four former employees of ATT Labs left ATT employment and went to work for INC. ATT v. Integrated Network Corp., 972 F.2d 1321, 1322 (Fed. Cir. 1992). Shortly after commencing their employment with INC, the former ATT employees filed for a patent on technology that ATT claimed was developed in ATT labs.
Bd. of Regents, Univ. of Tex. Sys., 414 F.3d at 1363; Thompson v. Microsoft Corp., 471 F.3d 1288, 1291-92 (Fed. Cir. 2006). Moreover, the appearance of "an alternative, non-patent theory" which may entitle the plaintiffs to their requested relief compels the conclusion that the cause of action does not arise under the patent laws. Christianson, 486 U.S. at 813, 108 S.Ct. 2166; Am. Tel. Tel. Co. v. Integrated Network Corp., 972 F.2d 1321, 1324 (Fed. Cir. 1992) ("Under Christianson, every theory of a claim as pled must depend on patent law if there is to be federal jurisdiction."). The only other cause of action in which patent law is essential is plaintiffs' fourth cause of action — slander of title. Under California common law, the elements of slander of title are: publication, falsity, absence of privilege, and disparagement of another's title which is relied upon by a third party and which results in a pecuniary loss.
The government, however, argues that section 5908 cannot "relat[e] to" patents because it is concerned solely with title, ownership, and assignment issues which are merely contract issues over which this court lacks exclusive jurisdiction. Though we agree that this court generally lacks jurisdiction over a simple contractual dispute involving construction of contract terms familiar to the patent law, see, e.g., American Tel. Tel. Co. v. Integrated Network Corp., 972 F.2d 1321, 23 USPQ2d 1918 (Fed. Cir. 1992) (presence of contractual terms "invention," "made or conceived," and "make or conceive" insufficient to permit removal of case from state to federal court); Ballard Medical Prods. v. Wright, 823 F.2d 527, 530, 3 USPQ2d 1337, 1339 (Fed. Cir. 1987) (that patent issues are relevant to resolution of a contract dispute "cannot possibly convert a suit for breach of contract into one `arising under' the patent laws"); Beghin-Say Int'l, Inc. v. Ole-Bendt Rasmussen, 733 F.2d 1568, 1570-71, 221 USPQ 1121, 1123 (Fed. Cir. 1984) (dispute over agreements that may assign future patent applications does not convert conflict into one under federal patent laws), and although we agree that "when an invention was conceived may be more a question of common sense than of patent law," American Telephone, 972 F.2d at 1324, 23 USPQ2d at 1920, we cannot escape the fact that section 5908, whether or not concerned purely with ownership, is an Act of Congress and therefore presents a case clearly distinguishable
The federal law must create the plaintiff's cause of action, or the plaintiff's claim must necessarily depend on a substantial federal law question. Borden v. Allstate Ins. Co., 589 F.3d 168, 172 (5th Cir. 2009); see Am. Tel. & Tel. Co. v. Integrated Network Corp., 972 F.2d 1321, 1324 (Fed. Cir. 1992) ("[E]very theory of a claim as pled must depend on patent law if there is to be federal jurisdiction."). III. ANALYSIS
In Christianson, the Supreme Court held that a state-law claim arises under the patent laws only when patent law is essential to every theory of a claim as pled in the complaint. 486 U.S. at 810; Bd. of Regents, Univ. of Tex, v. Nippon Tel. Tel. Corp., 414 F.3d 1358, 1363-64 (Fed. Cir. 2005); E.I. du Pont de Nemours Co., 344 F.3d at 581-82; Uroplasty, Inc. v. Advanced Uroscience. Inc., 239 F.3d 1277, 1279 (Fed. Cir. 2001); Am. Tel. Tel. Co. v. Integrated Network Corp., 972 F.2d 1321, 1325 (Fed. Cir. 1998). Here, the language of the Agreement indicates that Matthew's obligations apply to "any and all inventions, rights, titles, and interests throughout the world, concepts, know-how, improvements, and trade secrets" regardless of whether or not they are "patentable or registrable under copyright or trademark law."
486 U.S. at 810; Bd. of Resents. Univ. of Tex, v. Nippon Tel. & Tel. Corp., 414 F.3d 1358, 1363-64 (Fed. Cir. 2005); E.I, du Font de Nemours & Co., 344 F.3d at 581-82; Uroplasty. Inc. v. Advanced Uroscience. Inc., 239 F.3d 1277, 1279 (Fed. Cir. 2001); Am. Tel. & Tel. Co. v. Integrated Network Corp., 972 F.2d 1321, 1325 (Fed. Cir. 1998). Here, the language of the Agreement indicates that Matthew's obligations apply to "any and all inventions, rights, titles, and interests throughout the world, concepts, know-how, improvements, and trade secrets" regardless of whether or not they are "patentable or registrable under copyright or trademark law."
In that case, the relevant contract provision assigned rights to “inventions ... conceived” during the contractual period.972 F.2d 1321 (Fed.Cir.1992). The court noted that “conception of inventions ... is [not] solely a technical question of patent law.... [T]here is no reason to assume [the contract] meant to cover only those [inventions] which are patentable.”
This may require a determination of who "created" or "conceived of" the technology. But "conception of inventions" is not "solely a technical question of patent law," American Tel. Tel. Co. v. Integrated Network Corp., 972 F.2d 1321, 1324 (Fed. Cir. 1992), and the fact that a state trade secret and breach of contract action "may involve a determination of the true inventor does not convert that action into one `arising under' the patent laws," Consolidated World Housewares, Inc. v. Finkle, 831 F.2d 261, 265 (Fed. Cir. 1987). See also Board of Regents v. Nippon Tel. Tel. Corp., 414 F.3d 1358 (Fed. Cir. 2005).