United States Court of Appeals

For the First Circuit

No. 07-2629

CYTOLOGIX CORPORATION,

Plaintiff, Appellant,

v.

VENTANA MEDICAL SYSTEMS, INC.,

Defendant, Appellee.

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Rya W. Zobel, U.S. District Judge]

Before

 Torruella, Circuit Judge,

Selya, Senior Circuit Judge,

and Lipez, Circuit Judge.

Jack R. Pirozzolo, Sarah Cooleybeck and Foley Hoag LLP, on

response to appellee's motion to dismiss and appellant's crossmotion to transfer, for appellant.

Todd M. McGrath, Seyfarth Shaw LLP, Michael P. Foradas, Mark

A. Pals and Kirkland & Ellis LLP, on motion to dismiss, for

appellee.

January 17, 2008
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Per Curiam. This is an appeal from a single judgment of

the district court in two cases, both brought by CytoLogix Corp.

against Ventana Medical Systems, Inc. One of the two district

court cases, No. 01-10178, was a patent infringement action; the

other, No. 01-12231, was an antitrust/misappropriation action.

After two trials, both combining claims from each action, the

district court entered final judgment on all claims. Although

there was no formal order of consolidation before those trials, the

district court later entered an order stating that, in actuality,

the cases were consolidated for trial and ordering that they be

consolidated, nunc pro tunc, as of the commencement of the first

trial. CytoLogix then filed two identical notices of appeal from

the consolidated judgment, one in this court and one in the Court

of Appeals for the Federal Circuit.

Ventana has now moved to dismiss the appeal to this court

for lack of jurisdiction and has also sought sanctions under Rule

38 of the Federal Rules of Appellate Procedure. CytoLogix opposes

dismissal and sanctions but concedes that its appeal of the

disposition of its patent claims should be transferred to the

Federal Circuit. In the alternative, CytoLogix requests that the

entire appeal be transferred to the Federal Circuit rather than

dismissed. For the reasons discussed below, we dismiss the appeal

but deny sanctions.
Because the district court's jurisdiction under section 1338 1

is determined by application of the well-pleaded complaint rule,

the fact that a counterclaim or defense is based on patent law is

not sufficient to confer jurisdiction under that section. Holmes

Group, Inc. v. Vornado Air Circulation Sys., 535 U.S. 826, 830-33

(2002). Prior cases holding to the contrary, e.g., Aerojet-General

Corp. v. Machine Tool Works, Oerlikon-Buehrle, Ltd., 895 F.2d 736,

742-43 (Fed. Cir. 1990), are therefore no longer good law on that

point. See Telcomm Technical Servs., Inc. v. Siemens Rolm

Commc'ns, Inc., 295 F.3d 1249, 1251-52 (Fed. Cir. 2002).

Indeed, in an order in an interlocutory appeal in this case, 2

the Federal Circuit indicated that its jurisdiction over an appeal

from final judgment in the non-patent case would depend on whether

the two cases were consolidated, which was unclear from the record

at that point. Accordingly, the Federal Circuit expressed hope

that "the district court w[ould] illuminate its view of the issue

of whether the cases are consolidated or not during the remaining

proceedings," which the court ultimately did.

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"Under 28 U.S.C. § 1295(a) the Federal Circuit has

exclusive jurisdiction of an appeal if the jurisdiction of the

district court was based, in whole or in part, on 28 U.S.C.

§ 1338." Wang Labs., Inc. v. Applied Computer Sciences, Inc., 926

F.2d 92, 94-95 (1st Cir. 1991). In turn, section 1338 provides

that "[t]he district courts shall have original jurisdiction of any

civil action arising under any Act of Congress relating to

patents." 28 U.S.C. § 1338(a). As is apparent on the face of the

complaint in No. 01-10178, the district court's jurisdiction in

that case arose under patent law. Although the complaint in No. 1

01-12231 did not arise under patent law, "once the [two cases] were

consolidated, jurisdiction of the entire case was necessarily based

'in part' on section 1338." Xeta, Inc. v. Atex, Inc., 825 F.2d 2

604, 607-08 (1st Cir. 1987) (citing In re Innotron Diagnostics, 800
Cytologix relies on In re Mass. Helicopter Airlines, Inc., 3

469 F.2d 439, 441-42 (1st Cir. 1972), for the proposition that

consolidated cases remain separate for purposes of determining

appellate jurisdiction. In doing so, it reads Mass. Helicopter too

broadly. That case involved appealability in the absence of a

final judgment on all claims or a certificate under Rule 54(b) of

the Federal Rules of Civil Procedure. Even in that context, we

reserved decision on "[w]hether consolidated actions must remain

separate actions under every conceivable set of circumstances."

Id. at 442 n.3. In a later case, we expressly limited Mass.

Helicopter's holding to the Rule 54(b) context, stating that it

"does not mandate that consolidated cases always retain their

separateness for all purposes." Bay State HMO Mgmt., Inc. v.

Tingley Sys., Inc., 181 F.3d 174, 177-78 (1st Cir. 1999). 

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F.2d 1077, 1080 (Fed. Cir. 1986)); see also Wang Labs., 926 F.2d at

95. Accordingly, the Federal Circuit has exclusive jurisdiction

over this appeal. Wang Labs., 926 F.2d at 95. 3

Ordinarily, having reached the above conclusion about an

appeal filed in this circuit, we would transfer the appeal to the

Federal Circuit as authorized by 28 U.S.C. § 1631. See id. at 95

& n.4. However, because an identical appeal is already pending

there, we will simply dismiss the appeal mistakenly filed here,

without prejudice.

Although Ventana has thus prevailed on its motion to

dismiss, we do not find Cytologix's position to be so frivolous as

to warrant sanctions under Rule 38 of the Federal Rules of

Appellate Procedure. See Powell v. Alexander, 391 F.3d 1, 24 (1st

Cir. 2004). Accordingly, Ventana's request for sanctions is

denied.
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The motion to dismiss is granted. The motion for

sanctions and the cross-motion to transfer are denied. No costs.