Id. The Federal Circuit held that it lacked jurisdiction and found “the district court erred in holding that it had jurisdiction to hear this case pursuant to 28 U.S.C. § 1338(a).” Id.

Christianson, 486 U.S. at 809; see also Amperion, Inc. v. Current Group, LLC, 444 F. App’x 477, 478-479 (2d Cir. 2011) (citations omitted). The Supreme Court has “set[] a lenient standard for [federal[ jurisdiction under 28 U.S.C. § 1338(a).” U.S. Valves, Inc. v. Dray, 212 F.3d 1368 (Fed. Cir. 2000) (citing Christianson, 486 U.S. at 800).

To the extent Plaintiff is claiming protection of its alleged U.S. copyright registration under Mexican copyright law pursuant to the UCC and the Berne Convention, Plaintiff’s claim should be dismissed because such a claim should be litigated, if at all, in Mexico, not the U.S., as explained below. Case 1:16-cv-03107-NGG-RER Document 22-1 Filed 11/30/16 Page 26 of 31 PageID #: 142 -18- Art Library, Ltd. v. Corel Corp., 25 F. Supp. 2d 421, 430 (S.D.N.Y. 1998) (Sections 1331 and 1338 both unavailing as source of jurisdiction for foreign copyright infringement claims). Just as legions of courts have dismissed a claim under U.S. copyright law for an allegedly infringing act committed outside of the U.S. as explained above, other courts have dismissed claims under foreign copyright law for an allegedly infringing act committed in a foreign country.

The Court has supplemental jurisdiction over the remaining state- and common-law causes of action pursuant to 28 U.S.C. § 1367, as the remaining claims are so closely related to the first three causes of action that they form part of the same case or controversy. This Court also has subject matter jurisdiction over the fourth and seventh causes of action for state and common-law unfair competition under 28 U.S.C. § 1338(b), because the unfair-competition claims are joined to a substantial and related trademark claim. 2 Plaintiff subsequently served on Defendants copies of Plaintiff’s request for entry of default and the subsequent notice by the Clerk of Court entering default against them.

EBI Holdings, Inc. v. Butler, No. 07-3259, 2009 U.S. Dist. LEXIS 11535, at *11 (C.D. Ill. Feb. 17, 2009) (denying motion to dismiss, noting that “the pre-Hecny cases upon which [movant] relies are unpersuasive”). Moreover, all of the cases Edge relies on – Learning Curve, Composite Marine, and C.H. Robinson Worldwide, Inc. v. Command Transportation, LLC, No. 05 C 3401, 2005 U.S. Dist. LEXIS 28063 (N.D. Ill. Nov. 16, 2005) – are distinguishable because, unlike here, the plaintiffs in those cases did allege harm based on the misappropriation of “trade secrets.” 1999 U.S. Dist. LEXIS 11262, at *8; 962 F.2d at 1265-68; 2005 U.S. Dist. LEXIS 28063, at *15-18. 15 Edge solely addresses § 1367(a) and not § 1338(b), which provides that “[t]he district courts shall have original jurisdiction of any civil action asserting a claim of unfair competition when joined with a substantial and related claim under the copyright, patent, plant variety protection or trademark laws.” Case: 1:09-cv-01521 Document #: 181 Filed: 05/25/11 Page 17 of 24 PageID #:7557 11 evaluates whether the counterclaim shares a “common nucleus of operative fact” with another claim in the action. Waterloov Gutter Prot. Sys. Co. v. Absolute Gutter Prot., L.L.C., 64 F. Supp. 2d 398, 404 (D.N.J. 1999); Houskins v. Sheahan, 549 F.3d 480, 495 (7th Cir. 2008).

In addition, the Pennsylvania Court would have had subject matter jurisdiction over this patent case under 28 U.S.C. §§ 1331, 1338. Although the prior action between the parties was dismissed for lack of standing, UPitt claims to have resolved its lack of standing by acquiring the patent ownership rights formerly held by Carnegie Mellon University (“CMU”). See UPitt Opp. Brf. at 2.

Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases. 28 U.S.C. § 1338 (a). As the Court in Vestron, Inc., v. Home Box Office, Inc., 839 F.2d 1380 (9th Cir. 1988) in analyzing whether federal jurisdiction existed concluded: "An action arises under the federal copyright laws if … the complaint is for a remedy expressly granted by the Act, … or asserts a claim requiring construction of the Act, … or, … where a distinctive policy of the Act requires that federal principles control the disposition of the claim.

For this reason alone, this Court has original jurisdiction under 28 U.S.C. § 1441. B. Removal Is Proper Under 28 U.S.C. § 1338(a) Because Petitioner Alleges Claims That Arise Under Federal Patent Law Federal question jurisdiction exists here for the independent reason that Petitioner’s claims necessarily give rise to substantial questions of federal patent law. Federal jurisdiction exists when a plaintiff’s “right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well- pleaded claims.”

(Landmark Screens, 183 Cal.App.4th at p.248 [evaluating “[t]he nature and extent ofthose patent rights present[s] a substantial issue of federal patent law.”].) B. A California Claim that Dependsfor Its Success on Evaluating Patent Strength Arises Under Patent Law Questionsofvalidity, enforceability, and infringementare “substantial” questions ofpatent law under §1338. (Hunter Douglas, supra, 153 F.3d at p.1330.) Here, the successofplaintiffs’ “objectively baseless” claim tumsonthe patent’s enforceability, and thus “depend[s] upontheresolution of a substantial question ofpatent law.”

(H. J. Heinz Co. v. Super. Ct. (1954) 42 Cal.2d 164, 172-173, quoting Pratt v. Paris Gas Light & Coke Co. (1897) 168 U.S. 255, 259.) Moreover, a claim “supported by alternative theories in the complaint may not form the basis for” exclusive federal jurisdiction under section 1338 “unless patent law is essential to each ofthose theories.” (Christianson vy. Colt Indus. Operating Corp. (1988) 486 U.S. 800, 810, italics added.)