USCA1 Opinion
[NOT FOR PUBLICATION]
UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
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No. 93-2336
CARL M. DIMANNO,
Plaintiff, Appellant,
v.
JAY O. SUCH AND THROTONICS, ET AL.,
Defendants, Appellees.
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APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. A. David Mazzone, U.S. District Judge]
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Before
Torruella, Selya and Stahl,
Circuit Judges.
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Carl M. DiManno on brief pro se.
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John O. Mirick, Charles B. Straus, III, and Mirick,
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O'Connell, DeMallie & Lougee, on brief for appellees.
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July 22, 1994
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Per Curiam. Carl M. DiManno appeals pro se from
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the district court's dismissal of his patent case on the
ground of res judicata. This court lacks appellate
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jurisdiction. We decline to transfer the case to the United
States Court of Appeals for the Federal Circuit, where the
appeal should have been brought originally, however, because
such a transfer would not be "in the interest of justice"
under 28 U.S.C. 1631.
Background
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DiManno was issued U.S. Letter Patent No. 4,339,138 on
July 13, 1982 ("the Patent") for a "throwing device" known as
the Throton. DiManno and appellee Jay O. Such together
incorporated appellee Throtonics Corporation ("Throtonics")
to manufacture and market the Throton. Such became President
and Chief Operating Officer of Throtonics. DiManno was an
officer and director until June, 1988, when he resigned and
entered into an Exclusive License Agreement ("the License
Agreement") and an Assignment of Proprietary Patent Rights
("the Assignment") with Throtonics.
The License Agreement gave Throtonics the exclusive
right to manufacture and sell the Throton. The Assignment
transferred ownership of the Patent to Throtonics.
Throtonics failed to record the Assignment with the Patent
and Trademark Office ("PTO") until November 24, 1989.
Meanwhile, on September 28, 1989, DiManno assigned the Patent
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to another party, Kozmos, Inc. ("Kozmos"). Kozmos recorded
that assignment with the PTO on September 29, 1989, two
months before Throtonics' recording of the Assignment to it.
In January, 1991, DiManno filed a suit in United States
District Court for the District of Massachusetts, claiming
patent infringement and breach of contract. The complaint
sought a declaration that he was the sole owner of the
Patent. DiManno invoked 35 U.S.C. 261 in support of his
claim that the Assignment was void. There was no diversity
of citizenship between the parties and the sole basis
asserted for jurisdiction was 28 U.S.C. 1338(a). The
district court dismissed the complaint for lack of subject
matter jurisdiction, ruling that "[n]o claims raised by the
plaintiff raise issues of patent law. At most, the plaintiff
has challenged the validity of the assignment of his patent
to the defendants and the outfall of that assignment. That
is a contractual dispute which does not implicate any rights
under the patent itself." DiManno v. Jay Such and Throtonics,
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No. 91-10099-MA (citations omitted). DiManno appealed to the
United States Court of Appeals for the Federal Circuit which
affirmed the dismissal.
DiManno also filed suit in Middlesex County Superior
Court against appellees, alleging breach of contract,
negligence and violation of G.L. c. 93A and seeking a
declaration that the License Agreement was void. In an
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opinion dated August 11, 1993, following a three-day jury-
waived trial at which DiManno appeared pro se, the state
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court ruled against DiManno on all of his claims and in favor
of Such and Throtonics on all of their counterclaims,
including breach of the Assignment and License Agreement.
The state court concluded that DiManno had effectively
conveyed his interest in the Patent in return for
consideration.
While the state case was pending, DiManno initiated this
second federal court action. The complaint sought a
declaration that the License Agreement and Assignment were
invalid and, therefore, could not be the basis for a patent
infringement suit by Such and Throtonics. It argued that,
pursuant to 35 U.S.C. 261, the assignment to Kozmos voided
any claim Throtonics might have had to a patent assignment.
Again, there was no diversity of citizenship claimed between
the parties and the sole basis of jurisdiction was 28 U.S.C.
1338. The district court granted appellees' motion to
dismiss on the grounds that, under the doctrine of res
judicata, the prior federal and state court decisions barred
the continuance of the second federal action.
Discussion
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Pursuant to 28 U.S.C. 1295(a)(1), the Federal Circuit
has exclusive jurisdiction over appeals from final decisions
of a district court where jurisdiction was based, in whole or
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in part, on 28 U.S.C. 1338(a). In this case, the only
plausible basis for federal jurisdiction was 1338(a).
Therefore, this court lacks appellate jurisdiction.
Under 28 U.S.C. 1631, a court lacking jurisdiction
"shall" transfer the case to a court where it could have been
brought originally, if such transfer is "in the interest of
justice." A transfer is not in the interest of justice if
the appeal lacks merit. See Howitt v. Dept. of Commerce, 897
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F.2d 583, 584 (1st Cir.) (stating, in dicta, that case is
"sufficiently weak on the merits" to preclude second guessing
of the Federal Circuit's determination that transfer was not
"'in the interest of justice'") cert. denied; 498 U.S. 895
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(1990) Galloway Farms, Inc. v. United States, 834 F.2d 998,
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1000 (Fed. Cir. 1987) ("The phrase 'if it is in the interest
of justice' relates to claims which are nonfrivolous and as
such should be decided on the merits."); Zinger Const. Co.,
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Inc. v. United States, 753 F.2d 1053, 1055 (Fed. Cir. 1985)
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(finding transfer would not be "in the interest of justice"
where there was no merit to underlying claim).
We conclude that DiManno's attempt to relitigate the
issue of federal subject matter jurisdiction is barred by the
doctrine of res judicata. "Although a dismissal for lack of
jurisdiction does not bar a second action as a matter of
claim preclusion, it does preclude relitigation of the issues
determined in ruling on the jurisdiction question." 18 C.
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Wright, A. Miller and E. Cooper, Federal Practice and
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Procedure 4436 at 340. See Railway Labor Executives' Ass'n
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v. Guilford Transp. Indus., Inc., 989 F.2d 9, 11 (1st Cir.
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1993); Walsh v. Int'l Longshoremen's Ass'n, AFL-CIO, 630 F.2d
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864, 870 (1st Cir. 1980).
DiManno's first federal action asserted the same basis
of jurisdiction ( 1338(a)) for essentially the same claims
as his second federal action. In both complaints, he sought
a determination that the Assignment and License Agreement
were invalid, leaving him the sole owner of the Patent. In
both complaints, DiManno relied upon 35 U.S.C. 261 in
support of his arguments. The district court dismissed the
first action for lack of federal subject matter jurisdiction.
The Federal Circuit affirmed that dismissal. DiManno,
therefore, is barred from relitigating the issue of whether
the district court has 1338(a) jurisdiction over
essentially the same claims as those asserted in his first
federal complaint.
Given our finding that res judicata applies to bar this
second federal court action, we conclude that it would not be
"in the interest of justice" to transfer the appeal to the
Federal Circuit. Therefore, we dismiss this case for lack of
appellate jurisdiction.
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