NOTE: This order is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

JOHN L. DEROSA, 

Plaintiff-Appellee, 

v. 

J.P. WALSH & J.L. MARMO ENTERPRISES, INC., 

Defendant-Appellant. 

__________________________ 

2012-1401 

__________________________ 

Appeal from the United States District Court for the 

Eastern District of Virginia in case no. 10-CV-0287, Judge 

Claude M. Hilton. 

Before BRYSON, LINN and REYNA, Circuit Judges. 

LINN, Circuit Judge. 

O R D E R 

J.P. Walsh & J.L. Marmo Enterprises, Inc. (“Marmo”) 

responds to the court’s order requiring it to show cause 

why this appeal should not be transferred to the United 

States Court of Appeals for the Fourth Circuit. 

The November 1998 agreement at the center of this 

dispute assigned John L. Derosa’s patent rights in his 

router chuck invention exclusively to Marmo, and, in 

exchange, Marmo agreed to manufacture and sell the 

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JOHN DEROSA v. J.P. WALSH 2

router chuck from which DeRosa would receive a certain 

percentage of the sales. 

In March 2010, apparently unsatisfied with Marmo’s 

efforts to manufacture and sell his invention, DeRosa filed 

the underlying complaint in Virginia state court. The 

thrust of that complaint was as follows: 

[T]he failure by [Marmo] to abide by its contractual and financial obligations under the 

contract have denied [DeRosa] the bargained 

for benefit thereof, that is steady flow of 

manufacturing business and the timely 

payment for the product by [Marmo] which 

may be remedied only by rescission or cancellation of the contract and the restoration of 

ownership of the patent rights in [DeRosa’s] 

intellectual property, his invention, the 

DeRosa Chuck. 

The action was removed to the United States District 

Court for the Eastern District of Virginia and subsequently referred to an arbitrator. The arbitrator found 

Marmo in breach of the assignment contract and awarded 

damages to DeRosa but declined to rescind the contract. 

The decision was ultimately confirmed by the district 

court, and this appeal followed. 

This court is a court of limited jurisdiction. See 

28 U.S.C. § 1295. The Supreme Court has explained that 

in order for this court to have appellate jurisdiction over a 

patent infringement case, the case must have arisen 

under the patent laws such that the plaintiff's wellpleaded complaint must “establis[h] 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....” Holmes 

Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 

Case: 12-1401 Document: 30 Page: 2 Filed: 01/03/2013
3 JOHN DEROSA v. J.P. WALSH

U.S. 826, 830 (2002); see also 28 U.S.C. §§ 1295(a)(1) and 

1338. 

Causes of action based on contractual rights in a patent assignment or license agreement as a general rule do 

not arise under the patent laws. See Luckett v. Delpark, 

Inc., 270 U.S. 496, 502-03 (1926); New Marshall Engine 

Co. v. Marshall Engine Co., 223 U.S. 473 (1912). Marmo 

nonetheless argues that the appeal is properly before this 

court because the complaint specifically requests a restoration of ownership in patent rights. 

That DeRosa’s complaint ultimately sought to restore 

ownership in the invention is of no great significance. 

The focus of the jurisdictional inquiry is whether the 

plaintiff “set up some right, title or interest under patent 

laws, or at least makes it appear that some right or 

privilege will be defeated by one construction, or sustained by the opposite construction of these laws.” 

Christianson v. Colt Industries Operating Corp., 486 U.S. 

800, 807-08 (1988). 

The complaint in this case did not turn on such a 

claim. The alleged harm stated was Marmo’s failure to 

abide by its “contractual and financial obligations under 

the contract” resulting in DeRosa not having received the 

“bargained for benefit” of “a steady flow of manufacturing 

business and the timely payment for the product.” Although a restoration of patent ownership is sought in the 

complaint, such relief is entirely premised on the claim 

that Marmo’s failure to fulfill its obligations under the 

contract warrants a remedy of rescission. As such, this 

case does not arise under the patent laws, and we do not 

have jurisdiction. 

 In Jim Arnold Corp. v. Hydrotech Systems, Inc., 109 

F.3d 1567 (Fed. Cir. 1997), a case very similar to this one, 

this court held that a plaintiff seeking rescission of a 

patent assignment agreement in order to restore ownerCase: 12-1401 Document: 30 Page: 3 Filed: 01/03/2013
JOHN DEROSA v. J.P. WALSH 4

ship rights in a patent could not meet the jurisdictional 

test set forth in Christianson. As in the present case, the 

plaintiff in Jim Arnold had no rights in the patent without judicial intervention and was thus left only to argue 

that ownership of the patents should be restored based 

upon a breach of contract claim. Because a plaintiff under 

such circumstances could at best only present a frivolous 

allegation of ownership of the patents at issue sufficient 

to confer jurisdiction under section 1338, we transferred 

the case to the regional circuit. Since the same outcome is 

warranted here, pursuant to 28 U.S.C. § 1631, we transfer 

the case to the Fourth Circuit. 

 Accordingly, 

IT IS ORDERED THAT: 

The appeal is transferred pursuant to 

28 U.S.C. § 1631 to the United States Court of Appeals for 

the Fourth Circuit. 

 FOR THE COURT

 /s/ Jan Horbaly 

 Jan Horbaly 

 Clerk 

s25 

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