No Federal Circuit Jurisdiction over Unjust Enrichment Claim Based on Defense of Patent Preemption

Case: Thompson v. Microsoft Corp., No. 06-1073 (Fed Cir. 12/8/06)

The One Sentence Summary: The Federal Circuit found patent jurisdiction lacking, even though Microsoft raised patent preemption as a defense, because the unjust enrichment claim as pled did not necessarily involve patent law.

What They Were Fighting About: Plaintiff claimed Microsoft used code for programmable folders, which he had developed (and shared with Microsoft), without his consent, and brought suit on a single claim for unjust enrichment; Microsoft claimed the suit was preempted by patent law. The Federal Circuit held it lacked jurisdiction to hear the appeal, after the district court granted summary judgment for Microsoft.

Federal Circuit Holdings:

• The district court had granted summary judgment for Microsoft, finding merit in its claim that Plaintiff's claim for unjust enrichment was preempted by patent law.
  
• On review, the Federal Circuit first addressed whether it even had jurisdiction over the appeal under 28 U.S.C. section 1295(a)(1), which creates jurisdiction over any civil action arising under any Act of Congress relating to patents. On its face, the complaint was merely for unjust enrichment under Michigan law. Therefore, the Court looked to whether patent law was a necessary element of the unjust enrichment claim.
  
• While Microsoft had filed a patent application that plaintiff claimed was based on his invention, the Federal Circuit reasoned that was not a necessary element of the claim, because the unjust enrichment was based on Microsoft's use, not just patenting, of plaintiff's alleged proprietary information. Thus, plaintiff's claim could stand without any patent allegations.
  
• Moreover, because inventorship was not a necessary element of the claim, and because a claim supported by alternative theories does not support patent jurisdiction unless patent law is essential to each theory (which here it was not), jurisdiction did not arise under patent law.
  
• Noting that jurisdiction is not conferred merely because the defendant asserts a defense based on patent law, the Federal Circuit next held that jurisdiction was not created merely because Microsoft claimed the unjust enrichment law was preempted by patent law.
  
• Based on these holdings, the Federal Circuit found it lacked jurisdiction over the appeal, and ordered the case transferred to the Sixth Circuit.