United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MEMORYLINK CORP., 

Plaintiff-Appellant, 

v. 

MOTOROLA, INC., JONATHAN P. MEYER, 

HUGH C. DUNLOP, THOMAS G. BERRY, 

J. RAY WOOD, AND TERRI S. HUGHES, 

Defendants-Appellees. 

__________________________ 

2010-1533 

__________________________ 

Appeal from the United States District Court for the 

Northern District of Illinois in case no. 09-CV-7401, Judge 

William J. Hibbler. 

__________________________ 

ON PETITION FOR PANEL REHEARING AND 

REHEARING EN BANC 

__________________________ 

 PAUL E. SCHAAFSMA, Novus IP, LLC, of Chicago, 

Illinois, filed a combined petition for panel rehearing and 

rehearing en banc for plaintiff-appellant. 

 ANNE M. SIDRYS, P.C., Kirkland & Ellis, LLP, of 

Chicago, Illinois, filed a response to the petition for defendants-appellees. With her on the response were NYIKA O.

STRICKLAND and JOEL R. MERKIN. 

__________________________ 
MEMORYLINK CORP v. MOTOROLA 2

 Before RADER, Chief Judge, NEWMAN, LOURIE, 

BRYSON, LINN, DYK, PROST, MOORE, O’MALLEY, REYNA, 

and WALLACH, Circuit Judges. 

PER CURIAM. 

O’MALLEY, Circuit Judge, dissents from the denial of 

the petition for rehearing en banc. 

. O R D E R

A combined petition for panel rehearing and rehearing en banc was filed by Plaintiff-Appellant, and a response thereto was invited by the court and filed by 

Defendants-Appellees. The petition for rehearing was 

referred to the panel that heard the appeal, and thereafter the petition for rehearing en banc and the response 

were referred to the circuit judges who are authorized to 

request a poll of whether to rehear the appeal en banc. A 

poll was requested, taken, and failed. 

Upon consideration thereof, 

IT IS ORDERED THAT: 

(1) The petition of Plaintiff-Appellant for panel rehearing is denied. 

(2) The petition of Plaintiff-Appellant for rehearing en 

banc is denied. 

(3) The mandate of the court will issue on April 18, 

2012. 

FOR THE COURT

April 11, 2012

Date 

/s/ Jan Horbaly

Jan Horbaly 

Clerk 

 
United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MEMORYLINK CORP., 

Plaintiff-Appellant, 

v. 

MOTOROLA, INC., JONATHAN P MEYER, 

HUGH C. DUNLOP, THOMAS G. BERRY, 

J. RAY WOOD, AND TERRI S. HUGHES, 

Defendants-Appellees. 

__________________________ 

2010-1533 

__________________________ 

Appeal from the United States District Court for the 

Northern District of Illinois in case no. 09-CV-7401, Judge 

William J. Hibbler. 

 O’MALLEY, Circuit Judge, dissenting from the denial 

of the petition for rehearing en banc. 

__________________________ 

For the reasons detailed in my dissent from the denial 

of rehearing en banc in Byrne v. Wood, Herron & Evans, 

LLP, --- F.3d ---, 2012 U.S. App. LEXIS 6021 (Fed. Cir. 

Mar. 22, 2012), I respectfully dissent from the court’s 

refusal to consider this matter en banc. This court’s 

routine extension of jurisdiction to purely state-law malpractice claims is improper and conflicts with governing 

Supreme Court precedent. The fact that this appeal was 

resolved by way of a judgment pursuant to Fed. Cir. R. 36 
MEMORYLINK CORP v. MOTOROLA 2

(“Rule 36”) does not render the grounds upon which our 

jurisdiction was premised any less incorrect and should 

not discourage us from revisiting that judgment. 

Here, Memorylink alleged a single count of legal malpractice, under Illinois law, based on the defendants’ 

alleged negligent failure to identify the proper inventors 

in a patent application. The district court dismissed the 

complaint as time-barred under the relevant Illinois 

statutes of limitations and repose, and Memorylink appealed to this court. Appellees moved to transfer the 

appeal to the Seventh Circuit on grounds that the cause of 

action arose under state, not federal patent law. We 

denied that motion on the mistaken belief that Memorylink’s complaint “sought to correct the inventorship” of the 

patent at issue. Memorylink Corp. v. Motorola, Inc. 419 

Fed.App’x. 991, 992 (Fed. Cir. 2011). That ruling was 

expressly “without prejudice” to Appellees’ right to raise 

the issue again to the merits panel. Id. Appellees, thereafter, continued to press their jurisdictional objection in 

their merits brief. 

In their brief, Appellees pointed out that, in fact, no 

inventorship challenge was brought in this action, explained that a separate federal action seeking to correct 

inventorship and asserting infringement was filed in 

federal court and remains pending, and asserted that it is 

the second action that arises under the patent laws, not 

this one. Brief of Defendants-Appellees at 3-5, Memorylink Corp. v. Motorola, Inc., No. 2010-1533 (Fed. Cir. June 

24, 2011). Appellees disagreed that this court could 

properly exercise jurisdiction over this matter which 

raises issues cognizable only under state law and which 
3 MEMORYLINK CORP v. MOTOROLA

was, in their view, properly in federal court only because 

the parties were of diverse citizenship.1

The panel disposed of this appeal via Rule 36, our rule 

permitting summary affirmance of appeals in the following circumstances: 

The court may enter a judgment of affirmance without 

opinion, citing this rule, when it determines that any of 

the following conditions exist and an opinion would have 

no precedential value: 

(a) the judgment, decision, or order of the 

trial court appealed from is based on findings that are not clearly erroneous; 

(b) the evidence supporting the jury’s verdict is sufficient; 

(c) the record supports summary judgment, directed verdict, or judgment on the 

pleadings; 

(d) the decision of an administrative 

agency warrants affirmance under the 

standard of review in the statute authorizing the petition for review; or 

(e) a judgment or decision has been entered without an error of law. 

 1 The fact that defendants—unsurprisingly, given 

their successful appeal in this court—now consent to our 

jurisdiction is irrelevant. See, e.g., Coastal Corp. v. 

United States, 713 F.2d 728, 730 (Fed. Cir. 1983) (“Jurisdiction of a tribunal, however, cannot be conferred by 

waiver or acquiescence. A court always is obligated to 

consider not only its own jurisdiction but that of the 

tribunal from which an appeal is taken.”) (citing Mansfield, Coldwater & Lake Mich. Ry. Co. v. Swan, 111 U.S. 

379, 382 (1884)). 
MEMORYLINK CORP v. MOTOROLA 4

Fed. Cir. R. 36. By resorting to Rule 36, the panel 

necessarily resolved Appellee’s jurisdictional challenge—

rejecting it without discussion. 

Though the panel’s use of Rule 36 to resolve this matter, including the question of our subject matter jurisdiction over it, is understandable given the extent and 

breadth of our case law on the topic,2 it should not insulate the decision from en banc review. A Rule 36 judgment remains a judgment of this court and parties should 

not be discouraged from asking the entire court to assess 

the propriety of those judgments where our subject matter 

jurisdiction is in question. 

As discussed at length in my dissent from the en banc

denial in Byrne, the jurisdictional predicate upon which 

the exercise of appellate review in this court rests is 

wrong. The Supreme Court in Christianson outlined a 

two-prong test, in which district court jurisdiction under 

§ 1338(a) extends "only to those cases in which a wellpleaded complaint establishes either (1) that federal 

patent law creates the cause of action or (2) 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 wellpleaded claims." Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 808-09, (1988) (citations omitted). 

It is the second prong of the Christianson test that is at 

 2 See, e.g., Air Measurement Techs., Inc. v. Akin 

Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. 

Cir. 2007); Immunocept, LLC v. Fulbright & Jaworski, 

LLP, 504 F.3d 1281 (Fed. Cir. 2007); Davis v. Brouse 

McDowell, L.P.A., 596 F.3d 1355 (Fed. Cir. 2010); Byrne v. 

Wood, Herron & Evans, LLP, 450 F. App'x 956 (Fed. Cir. 

2011). 

 
5 MEMORYLINK CORP v. MOTOROLA

issue here, and in Grable & Sons Metal Prods. v. Darue 

Eng'g & Mfg., 545 U.S. 308, 313-14 (2005), the Court 

articulated the test for that prong as follows: "does a 

state-law claim necessarily raise a stated federal issue, 

actually disputed and substantial, which a federal forum 

may entertain without disturbing any congressionally 

approved balance of federal and state judicial responsibilities." 

Here, to the extent this negligence case implicates 

patent law at all, it does not do so in any substantial or 

meaningful way. No patent rights will be altered, no 

change in inventorship can occur in the context of it, and 

no binding discussion of principles of inventorship could 

emerge. And, resolution of the patent issue involved is 

only one factor in the state law negligence analysis which 

would be employed in deciding this case; the federal issue 

is simply not dispositive of the case. 

Balanced against this insubstantial brush with patent 

law is the fact that, by asserting jurisdiction over these 

types of cases, we are disturbing the appropriate balance 

between state and federal courts. Where as here, the 

patent law issue is resolved in a purely hypothetical 

context, with no binding effect on patent rights or governing patent law, the federal interest in patent law uniformity is slim. That interest is simply insufficient to supplant 

the state law interest in policing the conduct of attorneys 

practicing within its borders or in the uniform application 

of state law negligence principles. 

As we have explained on many occasions, “[a]ppeals 

whose judgments are entered under Rule 36 receive the 

full consideration of the court, and are no less carefully 

decided than the cases in which we issue full opinions. 

The Rule permits the court to dispense with issuing an 

opinion that would have no precedential value, when the 
MEMORYLINK CORP v. MOTOROLA 6

circumstances of the Rule exist.” U.S. Surgical Corp. v. 

Ethicon, Inc., 103 F.3d 1554, 1556 (Fed. Cir. 1997) (citing 

Taylor v. McKeithen, 407 U.S. 191, 194 n. 4 (1972). Full 

review of a matter necessarily includes review at all 

stages of the appellate process, including thoughtful en

banc review where appropriate. 

While Rule 36 may provide an efficient tool through 

which to dispose of appeals that merely retread familiar 

ground, it does not relieve us of our obligation to determine whether that ground needs re-tilling. It is inappropriate to allow our reluctance to consider Rule 36 cases en

banc to shield important jurisdictional decisions from 

review, particularly where, as here, non-frivolous challenges to our subject matter jurisdiction have been lodged.