USCA1 Opinion

[NOT FOR PUBLICATION]

UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT

___________________
No. 93-2336

CARL M. DIMANNO,
Plaintiff, Appellant,
v.
JAY O. SUCH AND THROTONICS, ET AL.,
Defendants, Appellees.
__________________
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. A. David Mazzone, U.S. District Judge]
___________________
___________________
Before
Torruella, Selya and Stahl,
Circuit Judges.
______________
___________________

Carl M. DiManno on brief pro se.

_______________
John O. Mirick, Charles B. Straus, III, and
________________
_________________________
O'Connell, DeMallie & Lougee, on brief for appellees.
____________________________

Mirick,
_______

__________________
July 22, 1994
__________________

Per Curiam.
__________
the

district court's

ground

of

res
___

jurisdiction.
States Court

Carl M. DiManno appeals

dismissal of

judicata.
________

his

This

pro se from
___ __

patent case

court

lacks

on the

appellate

We decline to transfer the case to the United

of Appeals for

appeal should have been

such a transfer
under 28 U.S.C.

the Federal Circuit,

where the

brought originally, however, because

would not

be "in the

interest of

justice"

1631.
Background
__________

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

incorporated

and appellee

appellee Throtonics

Operating Officer of
and director until June,

entered

into an

Agreement")

and an

together

Such became President

Throtonics.

officer

Exclusive

O. Such

Corporation ("Throtonics")

to manufacture and market the Throton.

and Chief

Jay

DiManno

was an

1988, when he resigned and

License Agreement

("the License

Assignment of Proprietary

Patent Rights

("the Assignment") with Throtonics.

The
right to

License

gave

manufacture and sell

transferred

ownership

Throtonics failed
and

Agreement

Trademark

of

Office

the exclusive

the Throton.
the

to record

Throtonics

Patent

The Assignment
to

the Assignment with

("PTO")

until

November

Throtonics.
the Patent
24,

1989.

Meanwhile, on September 28, 1989, DiManno assigned the Patent

-2-

to another

party, Kozmos, Inc. ("Kozmos").

that assignment

with

the PTO

on

Kozmos recorded

September 29,

1989,

two

months before Throtonics' recording of the Assignment to it.

In January, 1991, DiManno filed a suit in United

District Court

for the

patent infringement
sought
Patent.

District of Massachusetts,

and breach

a declaration

that

DiManno invoked

citizenship

asserted for

between

the

was 28

has

The complaint
of

the

in support of

his

There was
and

sole

basis

1338(a).

The

complaint for lack

ruling that "[n]o claims

challenged the validity of the

to the defendants and

no diversity

the

U.S.C.

plaintiff raise issues of patent law.

claiming

sole owner

261

parties

dismissed the

matter jurisdiction,

the

was void.

jurisdiction

district court

he was

35 U.S.C.

claim that the Assignment

of

of contract.

States

of subject

raised by the

At most, the plaintiff

assignment of his patent

the outfall of that assignment.

is a contractual dispute which does not

That

implicate any rights

under the patent itself." DiManno v. Jay Such and Throtonics,

_______
_______________________
No. 91-10099-MA (citations omitted).
United

DiManno appealed to the

States Court of Appeals for the Federal Circuit which

affirmed the dismissal.

DiManno
Court

also

against

negligence
declaration

and
that

filed suit

appellees,
violation

in Middlesex

alleging
of

the License

-33

G.L.

breach
c.

Agreement

93A

County Superior
of

contract,

and seeking

was void.

In an

opinion dated
waived

August 11,

trial at

1993, following a

which DiManno

appeared

three-day jury-

pro se,
___ __

the state

court ruled against DiManno on all of his claims and in favor

of

Such

and

including
The

Throtonics

breach of

state

court

conveyed

his

on

all

of

the Assignment

concluded

interest

their
and

counterclaims,

License Agreement.

that

DiManno

had

effectively

the

Patent

in

return

in

for

consideration.
While the state case was pending, DiManno initiated this
second

federal

declaration

court

that the

action.

infringement suit by

any

the

sought

Assignment were

not be the basis for

Such and Throtonics.

to 35 U.S.C.

a patent

It argued

that,

261, the assignment to Kozmos voided

claim Throtonics might have had

Again, there was no

complaint

License Agreement and

invalid and, therefore, could

pursuant

The

to a patent assignment.

diversity of citizenship claimed between

parties and the sole basis of jurisdiction was 28 U.S.C.

1338.
dismiss

The
on

district court
the

granted

grounds that,

judicata, the prior federal

under

appellees' motion
the

doctrine of

to
res

and state court decisions barred

the continuance of the second federal action.

Discussion

__________
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

-44

in

part, on

plausible

28 U.S.C.

basis

for

1338(a).
federal

In this

jurisdiction

case, the only

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
justice."

originally, if such transfer is

A transfer

is not in

the appeal lacks merit.

F.2d 583, 584

(1st Cir.)

"in the interest of

the interest of justice

if

See Howitt v. Dept. of Commerce, 897

___ ______
_________________
(stating, in dicta,

that case

is

"sufficiently weak on the merits" to preclude second guessing

of the Federal Circuit's
"'in the

determination that transfer was not

interest of justice'")

(1990) Galloway

cert. denied; 498

____ ______

Farms, Inc. v. United States,

U.S. 895

834 F.2d 998,

_____________________

_____________

1000 (Fed. Cir. 1987) ("The phrase

of
such

'if it is in the interest

justice' relates to claims which

should be decided on

Inc. v. United States,

____
_____________

are nonfrivolous and as

the merits."); Zinger Const. Co.,

__________________

753 F.2d 1053, 1055 (Fed.

(finding transfer would not

Cir. 1985)

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.

jurisdiction

does not

"Although a dismissal for lack of

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.

-55

Wright,
Procedure
_________
v.

A.

Miller

and

E.

Cooper,

Federal Practice and

______________________

4436 at 340. See Railway Labor Executives' Ass'n

___ _______________________________

Guilford Transp. Indus., Inc.,

989 F.2d 9,

11 (1st Cir.

_____________________________
1993); Walsh v. Int'l Longshoremen's Ass'n, AFL-CIO, 630 F.2d
_____
___________________________________
864, 870 (1st Cir. 1980).
DiManno's first
of jurisdiction
as

1338(a)) for essentially

his second federal action.

a determination
were

federal action asserted the

that

the Assignment

support of his

DiManno

and License

sole owner of

relied upon

arguments.

the same claims

In both complaints, he sought

invalid, leaving him the

both complaints,

same basis

35

The district

Agreement

the Patent. In

U.S.C.

261

in

court dismissed the

first action for lack of federal subject matter jurisdiction.

The

Federal

therefore, is
the

Circuit

that

dismissal.

barred from relitigating the

district

essentially

affirmed

court

has

the same claims

1338(a)

DiManno,

issue of whether

jurisdiction

as those asserted

over

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"

Federal Circuit.

to transfer the

appeal to the

Therefore, we dismiss this case for lack of

appellate jurisdiction.

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