# UnitedStates C ou rt o f App eals For th e First C ircuit

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 L LP, onresponse 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 m o t i o n t o dismiss, for appellee.

January 17, 2008-2- 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. 0 1

- 1 0 178, was a patent infringement action; the other, No. 01-12231, was an antitrust/misappropriation action. After two trials, both combining claims from ea c h a c tion, 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 pate n t c l aims should be transferred to the Federal Circuit. In the alternative, CytoLogix requests that the entire appeal be transferred to t he 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 determin e d 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 Techni c a l S ervs., 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 t h a t p o i n t . A c c o r d i n g l y , t h e F e d e r a l C i r c u i t e x p r e s s e dh ope 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. -3- "Under 28 U.S.C. § 1295(a) the F e d eral Circuit has exclusive jurisdiction of an appeal if the jurisdiction of the distric t c o u r t w a s b a s e d , i nw h o l e o ri np a r t , o n2 8 U . S .C. § 1338." Wang Labs., Inc. v. Applied Computer Sciences, Inc., 926 F.2d 9 2 , 9 4

- 9 5 ( 1 s t C i r . 1 9 9 1 )
. I nt u r n , s e c t i o n1 3 3 8 p r ovides that "[t]he district courts shall have original jurisdiction of any civil action a r i s i ng 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 p atent 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, 800Cytologix relies on I n re Mass. Helicopter Airlines, Inc., 3 469 F.2d 439, 441-42 (1st Cir. 1972), for the proposition that consolidated cases remain separate for purpo s e s 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 R u l e s o f Civil Procedure. Even in that context, we reserved decision on "[w]heth e r consolidated actions must remain separate actions under every conceiv able set of circumstances." Id. at 442 n.3. In a later case, we expressly limited Mass. He l i c o p t e r ' s h o l d i n g t o t h e Ru l e 5 4 ( b ) c o n t e x t , s t a t i n g t h a t 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). -4- F.2d 1077, 1080 (Fed. Cir. 1986)); see also Wang Labs., 926 F.2d at 95. Accordingly, the F e d e ral 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, w e will simply dismiss the appeal mistakenly filed here, without prejudice.

Although Ventana has thus prevailed o n 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 f o r sanctions is denied.-5- The motion to dismiss is granted. The motion for sanctions and the cross-motion to transfer are denied. No costs.