United States District Court, W.D. Washington, Seattle
ORDER DENYING MOTION FOR REMAND AND MOTION FOR RELIEF
RICARDO S. MARTINEZ CHIEF UNITED STATES DISTRICT JUDGE
matter comes before the Court on Plaintiff's Motion for
Remand and Request for Attorney's Fees and Costs (Dkt.
#8) and Motion for Relief from Initial Court Order Setting
Deadlines (Dkt. #9). Both motions are opposed. Dkts. ##10,
15. Defendant requested oral argument on Plaintiff's
Motion for Remand, however the Court does not find oral
argument necessary. Having considered the parties'
briefing and the relevant record and for the reasons set
forth below, the Court denies Plaintiff's Motion for
Remand and denies, as moot, Plaintiff's Motion for Relief
February 26, 2018, Plaintiff Phytelligence, Inc. filed this
action in King County Superior Court against Defendant
Washington State University. Dkt. #1-1. Plaintiff's
Complaint alleges that Defendant is in breach of contract and
seeks declaratory relief, specific performance of the
contract, and damages. Id. Defendant filed its
Answer and Counterclaim on March 8, 2018, alleging its own
claims of breach of contract, common law trademark
infringement and unfair competition, and violation of the
Washington Consumer Protection Act. Dkt. #8-1 at 12- 24. The
Answer and Counterclaim also alleges a claim of false
designation of origin pursuant to the Lanham Act, 15 U.S.C.
§ 1125(a) and states that Defendant intended to assert
its patent infringement claim separately in the U.S. District
Court for the Western District of Washington. Id. On
that same day, Defendant filed a complaint against Plaintiff
in this Court, alleging patent infringement. See
Phytelligence, Inc. v. Washington State University,
18-cv-00361-RSM. On March 18, 2018, Defendant filed an
Amended Answer and Counterclaim in this action, adding a
counterclaim of patent infringement identical to the claim
filed in its March 8, 2018 federal court action. Dkt. #8-1 at
26-35, 37-50. Defendant then filed a Notice of Removal on
March 19, 2018. Dkt. #1.
jurisdiction is strictly construed in favor of remand, and
any doubt as to the right of removal must be resolved in
favor of remand. Harris v. Bankers Life & Cas.
Co., 425 F.3d 689, 698 (9th Cir. 2005). The party
seeking a federal forum has the burden of establishing that
federal jurisdiction is proper. Abrego Abrego v. Dow
Chem. Co., 443 F.3d 676, 682-83 (9th Cir. 2006). The
removing party must carry this burden not only at the time of
removal, but also in opposition to a motion for remand.
See Moore-Thomas v. Alaska Airlines, Inc., 553 F.3d
1241, 1244 (9th Cir. 2009). Pursuant to the
“well-pleaded complaint rule, ” federal-question
jurisdiction exists “only when a federal question is
presented on the face of the plaintiff's properly pleaded
complaint.” Caterpillar Inc. v. Williams, 482
U.S. 386, 392 (1987). However, Defendant asserts that this
Court has jurisdiction over this matter pursuant to 28 U.S.C.
§ 1454, which allows removal of “[a] civil action
in which any party asserts a claim for relief arising under
any Act of Congress relating to patents, plant variety
protection, or copyrights.” 28 U.S.C. § 1454(a).
Section 1454 was “intended to provide federal courts .
. . with a broader range of jurisdiction; that is, with
jurisdiction over claims arising under the patent laws
even when asserted in counterclaims, rather than in
an original complaint.” Vermont v. MPHJ Tech.
Invs., LLC, 803 F.3d 635, 644 (Fed. Cir. 2015).
argues that Defendant's patent counterclaim is not
compulsory and that section 1454 is therefore not properly
applied here. This lawsuit arises out of a dispute related to
a contract between the parties (“Propagation
Agreement”), which allowed Plaintiff to propagate WA 38
trees, a new apple cultivar. Dkt. #1-1. The Propagation
Agreement also gave Plaintiff the option to obtain a license
to sell WA 38 trees in the future. Id. In 2016,
Plaintiff contacted Defendant to ask how to obtain a
commercial license to sell WA 38 trees. Id.
Defendant alleges that Plaintiff refused to choose any of the
options offered for obtaining a commercial license and sold
135, 000 WA 38 trees to a grower without a proper license.
Dkt. #1-2. Defendant contends that this sale was a violation
of the Propagation Agreement and its patent and trademark
rights. Id. Plaintiff alleges that Defendant refused
to issue Plaintiff a commercial license after two years of
negotiations, in violation of the Propagation Agreement. Dkt.
Plaintiff argues that the legal issues raised by the parties
share no legal or factual underpinning, Plaintiff admits that
there is a “logical relationship” between both
parties' claims, but argues that they are only related to
a “limited degree.” Dkt. #17 at 3-4.
Plaintiff's claims and Defendant's claims necessarily
arise out of the same set of facts: the Propagation
Agreement, Plaintiff's ability to obtain a commercial
license to sell WA 38 trees, and the alleged sale of the WA
38 trees. Both parties allege breach of the Propagation
Agreement, and Plaintiff's alleged breach of that
agreement is the basis for Defendant's patent and
trademark claims. Federal Rule of Procedure 13(a) provides
that a counterclaim is compulsory only if it arises out of
the same transaction or occurrence that is the subject of the
opposing party's claim. Fed.R.Civ.P. 13(a).
requirement is clearly met here.
the Court hereby finds and ORDERS that:
Plaintiff's Motion for Remand and Request for
Attorney's Fees and Costs (Dkt. #8) is DENIED.
Plaintiff's Motion for Relief from Initial Court Order
Setting Deadlines (Dkt. #9) is DENIED as moot.
Court will issue a new initial scheduling order.
 Defendant also argues that the Court
should strike Plaintiff's Motion for Remand for failure
to comply with Judge Jones' Standing Order for Civil
Cases. That Standing Order requires counsel to “contact
opposing counsel to discuss thoroughly, preferably
in person, the substance of the contemplated motion
and any potential resolution.” Dkt. #5.
Because the Court has otherwise found ...