## Facts

- Michael Therien was a tenured chemistry professor at the University of Pennsylvania.
- The university maintained policies addressing inventions developed by employees with the assistance of federal funding.
- Under the university’s patent policy, faculty were required to assign rights in future inventions to the university.
- The university obtained several patents based on Therien’s work.
- In 2004, Therien sued the university in Pennsylvania state court, asserting state-law claims for breach of contract, breach of fiduciary duty, negligent misrepresentation, and negligence.
- Therien alleged the university failed to satisfy obligations owed to him under university policies and his employment contract, including obligations related to commercialization of the patented technology.
- The university removed the case to federal district court, asserting federal-question jurisdiction on the theory that the complaint was, in substance, a dispute over the university’s obligations under the Bayh–Dole Act.
- The university also raised affirmative defenses grounded in federal patent law and the Bayh–Dole Act, arguing those federal sources defeated any duty to Therien.
- Therien moved to remand, arguing the federal court lacked subject-matter jurisdiction because his complaint pleaded only state-law causes of action.

## Issues

1. Whether the federal court had subject-matter jurisdiction under 28 U.S.C. § 1331 over a complaint alleging only state-law contract and tort claims, where the defendant relied on the Bayh–Dole Act and federal patent law to justify removal.
2. Whether the plaintiff’s state-law claims necessarily required resolution of a disputed and substantial federal issue (including Bayh–Dole or patent-law questions) sufficient to support federal-question jurisdiction.

## Decision

- The court granted Therien’s motion to remand.
- The court held it lacked federal-question jurisdiction under 28 U.S.C. § 1331 because the complaint asserted only state-law claims arising from the employment relationship and university policies.
- The court concluded that the university’s reliance on Bayh–Dole and federal patent law functioned as defenses or background federal context, not as elements of Therien’s well-pleaded claims.
- The case was remanded to state court without reaching the merits of Therien’s claims.

## Legal Principles

- Federal-question jurisdiction is determined by the well-pleaded complaint rule: a federal question must appear on the face of the plaintiff’s properly pleaded complaint.
- Removal cannot be based on a defendant’s federal defenses, including defenses based on federal statutes, patent-law doctrines, or preemption arguments.
- A state-law claim may support federal-question jurisdiction only in limited circumstances where a federal issue is necessarily raised, actually disputed, and sufficiently substantial, and where exercising jurisdiction fits the congressionally intended division of labor between state and federal courts.
- The Bayh–Dole Act’s role in federally funded research does not, by itself, convert state-law disputes between a university and a faculty-inventor over contractual or policy-based duties into federal causes of action.
- The presence of patents or patent-related defenses does not automatically create federal-question jurisdiction over state-law claims centered on contractual duties, fiduciary duties, or alleged misstatements and negligence.

## Conclusion

Because Therien pleaded only state-law claims tied to his employment contract and university policies, and because any Bayh–Dole Act or federal patent-law questions arose only through the university’s removal arguments and defenses rather than as necessary elements of the claims, the district court remanded the case to state court for lack of federal subject-matter jurisdiction.


Therien v. The Trustees of the University of Pennsylvania, 2006 U.S. Dist. LEXIS 746 (2006)