Miller v. Lucas

Opinion

KINGSLEY, Acting P. J.

Wendell Miller is appealing from an order (Code Civ. Proc., § 581d) dismissing plaintiff’s action entered after the demurrer of defendants James Lucas and Bell & Howell Company to plaintiff’s second amended complaint was sustained without leave to amend. The original complaint was filed March 20, 1972; it was amended twice and on April 25, 1975, the judge sustained the demurrer to each of plaintiff’s nine tort causes of action on the ground that the court lacked subject matter jurisdiction. The nine tort causes of action

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are for: (1) malicious prosecution; (2) abuse of process; (3) interference with prospective business interests; (4) injury to professional reputation; (5) slander of title; (6) actual fraud; (7) constructive fraud; (8) fraudulent inducement of breach of contract; and (9) conspiracy.

In May 1966, plaintiff was issued a patent for a certain invention. In October 1966 the defendants filed a patent application in the United States Patent Office and the application contained 15 claims copied from plaintiff’s patent. In June 1969 the patent office declared an interference between one of the 15 claims in Lucas’ patent application and the corresponding claim in the plaintiff’s patent. The defendants are alleged to have filed a motion to amend the interference to include therein the other 14 copied claims, but the patent office denied this motion. The patent interference proceedings are still pending, and the court below took judicial notice of those proceedings.

I

Appellant’s first argument is that the court erred in dismissing the complaint for want of subject matter jurisdiction. In ruling on the demurrer the court said that “an exercise of jurisdiction runs contrary to the express and exclusive power over patents granted to the Congress by the United States Constitution and the various acts of Congress which have reserved all matters regarding patents, whether substantive or procedural, exclusively to agencies of the federal government (Title 35 of the U.S. Code) or to the exclusive jurisdiction of the federal courts (28 U.S.C. § 1338(a))—including what penalties, if any, should be imposed for misuse of the patent procedure.”

Although the federal district courts have exclusive jurisdiction in patent and copyright cases (28 U.S.C. § 1338(a)), “every action that involves, no matter how incidentally, a United States Patent is not for that reason governed exclusively by federal law.”