Background
Zunum Aero sued Boeing in Washington state court, alleging that Boeing misused confidential information concerning Zunum’s hybrid-electric aircraft technology. Its 12 state-law claims included trade-secret misappropriation, breach of contract, and tortious interference. Zunum alleged numerous forms of misuse involving more than 30 trade secrets, including allegations that two Boeing patents contained misappropriated information.
Before removal, Boeing counterclaimed for a declaration that its personnel were the sole inventors of the Active Voltage patent. Boeing removed the action in July 2021 based on that federal patent-inventorship counterclaim. After removal, Boeing added a separate inventorship counterclaim concerning the Thin Haul patent in December 2021. The district court granted Boeing summary judgment on both patent counterclaims, but a jury later found for Zunum on several state-law claims and awarded more than $92 million. The district court then entered judgment as a matter of law for Boeing and conditionally granted a new trial.
A Ninth Circuit panel reversed those post-trial rulings and ordered reassignment on remand. Boeing’s rehearing petition then argued for the first time that exclusive appellate jurisdiction belonged to the Federal Circuit because Boeing’s patent counterclaims were compulsory.
The Court’s Holding
The panel denied rehearing. It held that Boeing’s inventorship counterclaims arose under federal patent law but were permissive rather than compulsory because they did not arise from the same transaction or occurrence as Zunum’s claims. Zunum could establish trade-secret misappropriation through numerous theories unrelated to patent inventorship, and it in fact prevailed at trial after Boeing had already prevailed on inventorship at summary judgment. The claims therefore lacked the substantial factual overlap required for compulsory counterclaims under Ninth Circuit precedent. The panel added that the counterclaims would also be permissive under Federal Circuit precedent.
Because the patent counterclaims were not compulsory, the Federal Circuit did not have exclusive jurisdiction under 28 U.S.C. § 1295(a)(1), and the Ninth Circuit properly heard the appeal. The panel also rejected Boeing’s fallback argument that permissive counterclaims could not support supplemental jurisdiction. Joining the First, Second, and Seventh Circuits, it held that the supplemental-jurisdiction inquiry is broader than Rule 13(a)’s compulsory-counterclaim test.
The district court properly exercised supplemental jurisdiction because Zunum’s state-law claims and Boeing’s federal counterclaims shared a common nucleus of operative fact: Boeing’s access to and alleged misuse of confidential information about Zunum’s hybrid-electric aircraft technology. Judge Bade concurred in denying rehearing and agreed that jurisdiction was proper, but she criticized the majority’s compulsory-counterclaim analysis and would have focused more directly on whether the essential occurrences underlying the claims belonged to the same transaction.
Key Takeaways
- A patent-law counterclaim triggers the Federal Circuit’s exclusive appellate jurisdiction under § 1295(a)(1) only if the counterclaim is compulsory.
- Factual overlap with one theory supporting a claim does not necessarily make a counterclaim compulsory; Rule 13(a) asks whether the counterclaim arises from the transaction or occurrence underlying the claim itself.
- A permissive federal counterclaim may support supplemental jurisdiction over state-law claims when the federal and state claims share a common nucleus of operative fact.
Why It Matters
The order clarifies the boundary between Ninth Circuit and Federal Circuit appellate jurisdiction when patent issues enter a case through counterclaims. A federal patent counterclaim does not automatically transfer appellate authority to the Federal Circuit; its compulsory or permissive character is decisive.
The decision also establishes in the Ninth Circuit that supplemental jurisdiction can extend beyond claims satisfying Rule 13(a)’s compulsory-counterclaim standard. That distinction preserves federal jurisdiction over factually connected state-law claims even when the connection is insufficient to require that all claims be pleaded together.