IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF ALABAMA

SOUTHERN DIVISION

SOUTHERN WATER MANAGEMENT, )

INC., k/k/a SYNERGY CHEMICALS, INC. )

and SYNERGY CHEMICALS PIPELINE )

DIVISION, INC., )

)

Plaintiffs, )

)

vs. ) Civil Action No.: 05-0357-BH-C

)

BRYAN GIPSON, KEVIN ANASTON, )

MARTIN C. STEPHENS, CHEM )

TECHNOLOGIES OF MISSISSIPPI, INC. )

)

Defendants. )

ORDER

This matter is before the Court on Plaintiffs’ Motion (Doc. 10) to Remand this case back to the

Circuit Court of Baldwin County, Alabama. Defendants filed a Response (Doc. 14) to the Motion and

Plaintiffs,inturn, filed a Reply (Doc. 16) to Defendants’ Response. Based on the pleadings before us and

all evidence submitted therewith, the Court finds that Plaintiffs’ Motion to Remand is due to be

GRANTED.

Defendants removed this case to federal jurisdiction on June 20, 2005 citing the presence of a

federalquestion, pursuant to 28 U.S.C. §1331, and the originaland exclusive jurisdictionoffederaldistrict

courts over questions involving patent laws, pursuant to 28 U.S.C. §1338(a). (Defs.’ Notice of Removal,

Doc. 1, p. 1-2). Defendants allege that when Plaintiffs amended their Complaint to include a claim of

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conversion of “work product; chemical formulas and processes; and job files, photographs, confidential

and proprietary data from customer jobs,” Plaintiffs were actually asserting a claimof patent infringement

under 35 U.S.C. §271. (Defs.’ Notice of Removal, ¶1). Defendants further state that Plaintiffs’ claim for

conversionof “chemicalformulas and processes”willnecessarily implicate federalpatent laws. (Id. at ¶5).

The Court recognizes that “[a] claim arises under the patent law if patent law creates the causes

of action or is a necessary element of one of the well-pleaded claims.” Jim Arnold Corp. v. Hydrotech

Systems, 109 F.3d 1567, 1571-72 (Fed. Cir. 1997). However, in the instant case, federal patent law

does not seem to create any of Plaintiffs’ causes of action nor serve as a necessary element of them.

Defendants’ allege that United States Patent No. 6,866,048 (hereinafter, the Patent) coversthe chemical

formulasand processes at issue inPlaintiffs’ claimof conversion. Therefore, they assert, resolution of these

claims would require the court to construe ownership and substance of the underlying patent. (Defs.’

Resp., Doc. 14, p. 2).

The Court disagrees. As Plaintiffs have stated, the Patent is not at issue nor known to be at issue

at this time. (Pl.’s Reply, Doc. 16, p.2). The chemical formula/process contained in the Patent is very

specific and limited. See Id. Plaintiffs, however, seem to be asserting their claims of conversion and

misappropriationoftrade secrets based uponDefendants’ allegedmisuseofabroader group ofprocesses,

formulae, applications and inventions forthe treatment and eliminationofblack powder/ironsulfide deposits

in both fluid and gas pipelines. Id. The issue is further clarified as Plaintiffs assert that their claims for

conversiondo not allege a conversionofthe chemicalformula/process contained in the Patent. Id. at 2-3.

Rather, Plaintiffs’ claims of conversion and conspiracy for conversion center predominantly around their

proposition that Defendants were marketing products by utilizing the Plaintiffs’job files, photographs and

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proprietary data in their advertising. Id. Plaintiffs claim that all of the data, job descriptions, photographs,

charts and graphs utilized by Defendants belong to the Plaintiffs and are their specific work product. Id.

at 2-3. Based onthisinformation, it is clearthat none ofPlaintiffs’state lawclaims implicate federal patent

law. Therefore, federal jurisdiction over this matter is inappropriate and Plaintiffs’ Motion (Doc. 10) to

Remand this matter to the Circuit Court of Mobile County is hereby GRANTED. 

So ORDERED, this 19th day of September, 2005. 

s/ W. B. Hand

SENIOR DISTRICT JUDGE

Case 1:05-cv-00357-BH-C Document 17 Filed 09/19/05 Page 3 of 3