Calvary Industries, Inc. v. Winters

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION

CALVARY INDUSTRIES, INC., : Case No. 1:23-cv-1

:

Plaintiff, : Judge Timothy S. Black

:

vs. :

:

JONATHAN K. WINTERS, JIM :

EPSTEIN, EVAN EPSTEIN, and THOR :

CUSTOM STEEL COATINGS, LLC, :

:

Defendants. :

ORDER GRANTING PLAINTIFF’S MOTION TO REMAND (Doc. 10)

This civil case is before the Court on Plaintiff Calvary Industries, Inc.’s

(“Calvary” or “Plaintiff”) motion to remand (Doc. 10) and the parties’ responsive

memoranda (Docs. 12, 15).

I. BACKGROUND

A. Factual Background1

1. Calvary and Winters discuss developing a ceramic coating

Calvary is a chemical manufacturing company in Butler County, Ohio. (Doc. 2 at

¶ 10). In early spring of 2018, Defendant Jonathan K. Winters (“Winters”) and Calvary’s

Vice President and Director of Product Development, Chris Berger (“Berger”), began

having conversations about an idea Winters had for a ceramic coating that Winters

1 The facts are taken from the allegations in the Verified Complaint for Temporary, Preliminary,

and Permanent Injunctive Relief and Damages, as filed in the Butler County Court of Common

Pleas (Doc. 2) (the “Complaint”).

believed would prevent steel from oxidizing during the hot stamping process used in

manufacturing steel parts for automobiles (the “ceramic coating”). (Id. at ¶¶ 13, 14). At

the time, Winters did not have a formula or any samples of this proposed coating; it was

merely a concept. (Id. at ¶ 14). On October 9, 2018, Calvary hired Winters as a product

developer and technical representative. (Id. at ¶ 15). Winters would perform two

primary roles at Calvary: (1) work with Calvary’s engineers, using Calvary’s laboratory

and equipment, to help develop the concept of the ceramic coating; and (2) generate sales

for the ceramic coating and other Calvary chemicals. (Id. at ¶ 16).

2. Calvary and Winters enter into an agent agreement

In October of 2018, Calvary and Winters entered into an agreement (the “Agent

Agreement”). (Id. at ¶ 17; id. at Ex. A, PageId 29-34). Under the Agent Agreement, for

the first two years of the relationship, Winters would receive a 50% share of the gross

profits from products that he helped develop and sell, with that percentage reduced to

31% after two years. (Id. at ¶ 17). The Agent Agreement also provided, in relevant part,

that: any intellectual property developed during the relationship would belong to Calvary;

Winters was not to disclose or use for his own benefit any confidential information

“whether patentable or not”; and during and for 18 months immediately following the

termination of Winters’ agent status, he was not to solicit, offer to sell, or sell any

products or provide any services that compete with or displace Calvary’s products or

services to customers who were provided Calvary products or services at any time during

the 18 months preceding termination. (Id. at ¶ 18; id. at Ex. A, PageId 29-30).

Calvary invested thousands of dollars in new equipment and supplies, and devoted

its other resources, including existing equipment and personnel, towards developing the

ceramic coating. (Id. at ¶ 19). Although Winters performed some work towards

developing the formula for the ceramic coating, the vast majority of work was performed

by Berger. (Id. at ¶ 20). At most, Winters showed up to work at Calvary’s facilities

approximately five days per month. (Id. at ¶ 20). On those days, Berger would cease

work on other projects and work side-by-side with Winters to develop the ceramic

coating. (Id. at ¶ 21).

By spring of 2020, Winters was performing only limited work for Calvary; so, as

permitted by the Agent Agreement, Calvary ceased paying Winters draws against future

sales and instead paid him the agreed upon gross profits that were generated from the

other products he worked on and sold. (Id. at ¶ 25). Berger continued to work on, and

make key revisions to, the formula for the ceramic coating. (Id. at ¶ 26).

3. Calvary and Thor pursue a joint venture

In the summer or fall of 2020, Winters approached Jim Epstein (“Jim”) and Evan

Epstein (“Evan”) about working with him on the ceramic coating. (Id. at ¶¶ 27, 30). In

so doing, Winters disclosed the developments made at Calvary without Calvary’s

knowledge or consent, in violation of the Agent Agreement. (Id. at ¶ 31). Winters, Jim,

and Evan, without Calvary, did not have the equipment or facilities to develop chemical

compounds such as the ceramic coating. (Id. at ¶ 33).

In the fall of 2020, Jim called Berger and informed him that he was working with

Winters on the ceramic coating, and asked about partnering with Calvary to develop and

produce it. (Id. at ¶ 34). Calvary was dismayed that Winters had disclosed confidential

information about the coating to third parties in violation of the Agent Agreement, but

was interested in working with Jim and Winters based on their connections at Nucor Steel

(“Nucor”), a potential customer. (Id. at ¶ 35).

On December 30, 2020, Jim, Evan, and Winters formed Defendant Thor Custom

Steel Coatings, LLC (“Thor”) (collectively, “Defendants”) as an Indiana LLC. (Id. at

¶ 36). Calvary and Defendants agreed to operate as a joint venture, sharing equally in all

costs and expenses of developing the ceramic coating, and sharing equally in any profits

from it. (Id. at ¶ 38).

4. The ceramic coating is successfully developed

By August 2021, without any meaningful input from Winters or Thor, Calvary

further developed the ceramic coating and had a breakthrough adhering it to steel. (Id. at

¶ 40). That month, Calvary provided samples to Nucor, but the ceramic coating failed to

cure properly. (Id. at ¶ 41). Jim and Berger communicated regarding a potential fix. (Id.

at ¶ 41). Berger continued to make further modifications and ultimately succeeded in

creating a formula that adhered to steel and withstood testing under extremely high

temperatures. (Id. at ¶¶ 42, 43). Berger notified Nucor, and on September 1, 2021,

Berger and Winters attended Nucor’s test, which was a success. (Id. at ¶ 46).

For several weeks prior to the successful test, Thor had promised to prepare a

more formal written agreement memorializing the joint venture between Thor and

Calvary, but did not send one until October 20, 2021. (Id. at ¶¶ 47, 48). The draft

agreement did not reflect what the parties had initially agreed, but instead misrepresented

Thor as the sole owner of the ceramic coating and relegated Calvary to the role of

supplier. (Id. at ¶ 48). Upon Calvary’s disapproval, Evan agreed to redraft, but never

sent a revised agreement to Calvary. (Id. at ¶¶ 49-51). In the meantime, Winters made

repeated requests to Berger to provide the revised formula that Berger had successfully

developed. (Id. at ¶ 53).

5. Calvary discovers Thor’s patent application for a coating technology

On September 19, 2022, Calvary learned that, on February 23, 2021, Thor had

filed a provisional patent application for a coating technology that incorporated

confidential and trade secret information developed by Calvary under the Agent

Agreement. (Id. at ¶ 57). This provisional patent listed Winters as the sole inventor. (Id.

at ¶ 57). The formula described in Thor’s provisional patent is materially different from

the formula for the ceramic coating that Calvary produced and that was successfully

tested on Nucor’s coil. (Id. at ¶ 57).

On October 20, 2022, the parties met in a final effort to memorialize the joint

venture agreement. (Id. at ¶ 58). At this meeting, it became clear that Defendants

intended to claim Calvary’s intellectual property as their own. (Id. at ¶ 58). And, despite

this dispute over ownership, Defendants were still attempting to contract with Nucor

and/or Ford to sell or license the ceramic coating. (Id. at ¶ 59).

B. Procedural Posture

Calvary initially filed suit against Defendants in the Southern District of Ohio on

November 22, 2022. See Calvary Industries, Inc. v. Winters et al., No. 1:22-cv-00686

(S.D. Ohio) (Dlott, J.) (“Calvary I”). In its complaint, Calvary brought a claim for

violation of federal law pursuant to the Defend Trade Secrets Act, 18 U.S.C. § 1836, et

seq., among other state law claims. (Calvary I, Doc. 1). With respect to the patent

applications, Calvary sought an order (i) requiring that the patent applications be

corrected to add Chris Berger as a named inventor; (ii) declaring that Calvary is the true

and lawful owner; and (iii) declaring that Calvary is the true and lawful owner of the

technologies described in the complaint. (Calvary I, Doc. 1 at 28). Along with its

complaint, Calvary filed a motion for temporary restraining order. (Calvary I, Doc. 3).

On December 16, 2022, Defendants filed an opposition under seal. Calvary’s reply was

set to be due on December 30, 2022, but Calvary voluntarily dismissed the case on

December 29, 2022. (Calvary I, Doc. 31). And, on that same day, Calvary refiled in the

Butler County Court of Common Pleas. (Doc. 1-4).

On January 3, 2023, Defendants filed a notice of removal to this Court pursuant to

28 U.S.C. §§ 1338(a) and 1441, leading to the present action. (Doc. 1). Calvary’s

operative complaint is largely the same as its complaint in Calvary I, except Calvary

removed all allegations citing federal subject matter jurisdiction and concerning its claim

under the Defend Trade Secrets Act, 18 U.S.C. § 1836, et seq. (Doc. 2). Thus, Calvary

moves to remand the action back to state court, arguing that only state law claims are

present. (Docs. 10, 15). In response, Defendants maintain removal was proper, and that

this Court may exercise jurisdiction over the action, because Calvary’s claims still raise

federal patent law issues. (Doc. 12).

II. STANDARD OF REVIEW

On a motion for remand, the question is whether the district court lacks subject

matter jurisdiction. 28 U.S.C. § 1447(c). The party seeking removal bears the burden of

establishing that removal was proper. Long v. Bando Mfg. of Am., Inc., 201 F.3d 754,

757 (6th Cir. 2000). Because removal raises significant federalism concerns, federal

courts must strictly construe such jurisdiction. Merrell Dow Pharm. Inc. v. Thompson,

478 U.S. 804, 808 (1986). A federal court must resolve any doubt of its removal

jurisdiction in favor of state court jurisdiction. Shamrock Oil & Gas Corp. v. Sheets, 313

U.S. 100, 108-09 (1941).

Defendants remove this action pursuant to 28 U.S.C. §§ 1441 and 1338. Section

1441 provides generally that “any civil action brought in a State court of which the

district courts of the United States have original jurisdiction, may be removed by the

defendant or the defendants, to the district court of the Unites States[.]” 28 U.S.C.

§ 1441(a). Section 1338 provides, in relevant part, that the “district courts shall have

original jurisdiction of any civil action arising under any Act of Congress relating to

patents[.]” 28 U.S.C. § 1338(a). Thus, the propriety of Defendants’ section 1441

removal depends on whether Plaintiff’s state law Complaint could be brought in federal

court pursuant to § 1338, i.e., whether Plaintiff’s claims “aris[e] under” federal patent

law.

For statutory purposes, a case can arise under federal patent law in two ways.

Gunn v. Minton, 568 U.S. 251, 257 (2013). One, when federal law “creates the cause of

action asserted.” Gunn, 568 U.S. at 257. And two, even when only state law claims are

asserted, when a federal issue is “(1) necessarily raised, (2) actually disputed,

(3) substantial, and (4) capable of resolution in federal court without disrupting the

federal-state balance approved by Congress.” Id. at 258 (applying test articulated in

Grable & Sons Metal Prods., Inc. v. Darue Eng’g & Mfg., 545 U.S. 308, 314 (2005), to

28 U.S.C. § 1338(a)). The Supreme Court has explained that only a “special and small

category” of cases would meet all four requirements. Gunn, 568 U.S. at 258.

III. CHOICE OF LAW2

As an initial matter, the Court must determine whether Sixth Circuit law or the law

of the Federal Circuit applies to the question of whether the Court has subject matter

jurisdiction pursuant to § 1338(a).

Federal Circuit law applies to “issues of substantive patent law” and to

“procedural issue[s] . . . if the issue pertains to patent law, if it bears an essential

relationship to matters committed to [the Federal Circuit’s] exclusive [jurisdiction] by

statute, or if it clearly implicates the jurisprudential responsibilities of [the Federal

Circuit] in a field within its exclusive jurisdiction.” In re Spalding Sports Worldwide,

Inc., 203 F.3d 800, 803 (Fed. Cir. 2000) (quoting Midwest Indus., Inc. v. Karavan, 175

F.3d 1356, 1359 (Fed. Cir. 1999) (en banc in relevant part) (internal citations and

quotation marks omitted)). A “procedural question not unique to patent law” is governed

by the law of the regional circuit. Madey v. Duke Univ., 307 F.3d 1351, 1358 (Fed. Cir.

2 Despite the importance of choice of law to the issues presented, neither party discussed the

applicability of Federal Circuit law. Nonetheless, the Court deems it an issue worthy of

discussion and has undertaken to analyze the propriety of applying Federal Circuit versus Sixth

Circuit law to the issues.

2002) (citation omitted); see, e.g., Info-Hold, Inc. v. Trusonic, Inc., No. 1:06CV543, 2008

WL 2949399, at *2 (S.D. Ohio July 30, 2008) (discussing choice of law as related to

patent issues).

The Federal Circuit has repeatedly held that “[w]hether a civil action arises under

an act of Congress related to patents necessarily presents an issue that is unique to patent

law.” Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1311 (Fed. Cir. 2016) (citing

Midwest Indus., Inc., 175 F.3d at 1359); see also Mars Inc. v. Kabushiki–Kaisha Nippon

Conlux, 24 F.3d 1368, 1371 (Fed. Cir. 1994) (“The issue whether the district court had

jurisdiction [under § 1338] to hear Mars’ claim of Japanese patent infringement is of

importance to the development of the patent law and is clearly a matter that falls within

the exclusive subject matter responsibility of this court.” (internal quotation marks and

citations omitted)); Helfgott & Karas, P.C. v. Dickinson, 209 F.3d 1328, 1333–34 (Fed.

Cir. 2000) (explaining that whether an action arises under the scope of § 1338 presents a

question that is unique to patent law); Intellisoft, Ltd. v. Acer Am. Corp., 955 F.3d 927,

931 (Fed. Cir. 2020) (applying Federal Circuit law to determine whether the district court

had § 1338 jurisdiction).

Accordingly, this Court applies Federal Circuit law to determine whether this

Court has subject matter jurisdiction over Plaintiff’s Complaint pursuant to § 1338(a).

IV. ANALYSIS

A. The Declaratory Judgment Claim (Count XIII)

Defendants argue that this Court has subject matter jurisdiction pursuant to 28

U.S.C. § 1338(a) “because [Plaintiff’s] underlying declaratory judgment claim seek[s] a

judicial determination of correct patent inventorship[.]” (Doc. 12 at 2). Specifically,

Defendants argue that Plaintiff seeks a determination that Berger is the inventor of the

coating technology claimed in Thor’s patent applications. (Id. at 4). Defendants point to,

among other allegations in the Complaint, the following: (i) Plaintiff’s allegation that

“Calvary is entitled to judgment declaring it as the owner of the coating technology/ies

with Mr. Berger as an inventor” (Doc. 2 at ¶ 129); and (ii) Plaintiff’s prayer for relief,

seeking an order “requiring that Thor [sic] amend its patent applications . . . to accurately

reflect that Chris Berger [sic] is a named inventor” (Id. at 25). Thus, Defendants argue

that inventorship is “at the heart of Calvary’s claim” and that “[t]here is no way Calvary

can prevail on its declaratory judgment claim without addressing the issue of

inventorship.” (Doc. 12 at 5).

Plaintiff argues that its Complaint “raises only state law claims.” (Doc. 15 at 2).

It does not, for example, “seek to have an existing patent undone; . . . claim that an

existing patent has been infringed upon; . . . seek to have a patent rejected or accepted;

[or] . . . allege a claim of patent infringement.” (Id. at 3). Plaintiff “merely seeks to have

[Thor] amend its patent application to reflect that one of Plaintiff’s employees, Chris

Berger, be named as co-inventor of the coating technology.” (Id. at 3) (emphasis added

and omitted). And, that any dispute regarding Berger’s inventorship status “[is] ancillary

and [does] not raise a substantial question of federal law such that subject matter

jurisdiction before this court exists.” (Id. at 1).

1. Subject Matter Jurisdiction

Plaintiff pleaded the request for declaratory judgment “pursuant to Ohio law”

(Doc. 2 at ¶ 129 (citing Ohio Revised Code Chapter 2721)), seeking “judgment declaring

it as the owner of the coating technology/ies with Mr. Berger as an inventor” (Doc. 2 at

¶ 129), and specifically requested that relief be granted by order “requiring that Thor [sic]

amend its patent applications . . . to accurately reflect that Chris Berger [sic] is a named

inventor” (Id. at 25).3

The Federal Circuit has treated “requests for declaratory relief relating to

inventorship as functional equivalents of actions formally brought pursuant to § 256.”

Larson v. Correct Craft, Inc., 569 F.3d 1319, 1325 (Fed. Cir. 2009) (citing cases); see

also Pappalardo v. Stevins, 746 F. App’x. 971, 974 (Fed. Cir. 2018) (accepting state

declaratory judgment claim as an action pursuant to 35 U.S.C. § 256 where the “true

nature” of plaintiff’s claim was for correction of inventorship in a patent application).

Here, in no uncertain terms, Plaintiff seeks a judicial determination that Berger is

an inventor of the coating technology in Thor’s patent applications and a corresponding

order requiring Thor to correct the alleged inventorship error in the same. (Doc. 2 at 24-

25). Thus, the “true nature” of Plaintiff’s declaratory judgment claim is for relief

3 As an initial matter, “the field of federal patent law preempts any state law that purports to

define rights based on inventorship.” HIF Bio, Inc. v. Yung Shin Pharm. Indus. Co., 600 F.3d

1347, 1352 (Fed. Cir. 2010) (quoting Univ. of Colo Found. v. Am. Cyanamid Co., 196 F.3d 1366,

1372 (Fed. Cir. 1999) (“An independent inventorship standard under state law would likely have

different requirements and give rise to different remedies than federal patent law. A different

state inventorship standard might grant property rights to an individual who would not qualify as

an inventor under federal patent law, or might grant greater relief to inventors than is afforded by

federal patent law. Either situation might frustrate the dual federal objectives of rewarding

inventors and supplying uniform national patent law standards.”)).

pursuant to federal law, specifically 35 U.S.C. § 256, and an action for correction of

inventorship.

Accordingly, this Court has subject matter jurisdiction over Plaintiff’s declaratory

judgment claim pursuant to § 1338(a). Larson, 569 F.3d at 1324-25 (state declaratory

judgment claim to correct inventorship in issued patent valid basis for federal jurisdiction

pursuant to § 1338(a)); Pappalardo, 746 Fed. App’x. at 974 (state declaratory judgment

claim to correct inventorship in patent application valid basis for federal jurisdiction

pursuant to § 1338(a)). However, although the Court has subject matter jurisdiction over

the declaratory judgment claim, to the extent Plaintiff seeks a correction of inventorship,

the analysis of whether this case remains in federal court does not stop here.

2. Private Right of Action

“A § 256 claim for correction of inventorship does not accrue until the patent

issues.” Pappalardo, 746 F. App’x. at 974 (quoting Hor v. Chu, 699 F.3d 1331, 1335

(Fed. Cir. 2012)). Indeed, there are no private causes of action available to a litigant to

challenge inventorship of a pending patent application. See HIF Bio, 600 F.3d at 1354-

54 (“Congress . . . has limited the avenues by which such inventorship [of a pending

patent application] can be contested” to “the Director of the [USPTO]”); see also 35

U.S.C. § 116.

As the parties recognize, the disputed patents have not yet issued. (Doc. 1 at 5;

Doc. 2 at ¶ 128). The claim has not accrued and Plaintiff’s declaratory judgment claim,

to the extent it seeks correction of inventorship, must be dismissed with prejudice

pursuant to Rule 12(b)(6). See HIF Bio, 600 F.3d at 1354 (holding claim for correction

of inventorship on a pending patent application should be dismissed under Rule

12(b)(6)); Pappalardo, 746 F. App’x. at 974 (vacating with instructions to dismiss

unaccrued claim with prejudice); Halpern v. PeriTec Bioscis., Ltd., 383 F. App’x 943,

947 (Fed. Cir. 2010) (affirming Rule 12(b)(6) dismissal because “an inventorship claim

involving pending patent applications raises a question of federal patent law, but does not

give rise to a private right of action that can be pursued in a district court” (citation

omitted)). And, should a patent issue from Thor’s patent applications, nothing prevents

Plaintiff from seeking declaratory judgment relief on a correction of inventorship at that

time. See Hor, 699 F.3d at 1336 (“Nothing in the plain language of § 256 or the

accompanying regulations indicates that the failure to challenge inventorship before the

PTO can potentially bar an inventor from later contesting inventorship under § 256.”).

Accordingly, Plaintiff’s declaratory judgment claim is dismissed with prejudice to

the extent that it seeks correction of inventorship errors in Thor’s pending patent

applications.

B. The Supplemental State Law Claims (Counts I-XII)

Plaintiff’s remaining claims are state law claims for breach of contract (Counts I,

II, VII, VIII), misappropriation of trade secrets (Counts III, IV), tortious interference

(Counts V, VI), conversion (Counts IX, X), civil conspiracy (Count XI), and unjust

enrichment (Count XII). (Doc. 2 at 14-24). The parties do not dispute that these claims

could be resolved without reliance on federal patent law. Instead, Defendants—as if by

premonition—argue that this Court should retain jurisdiction over pendant state law

claims, “even if the federal claim is later dismissed.” (Doc. 12 at 12-15).

In determining whether to retain jurisdiction over state law claims, a district court

should consider and weigh several factors, including the “values of judicial economy,

convenience, fairness, and comity.” Carnegie-Mellon Univ. v. Cohill, 484 U.S. 343, 350

(1988). A district court may also “consider whether the plaintiff has engaged in any

manipulative tactics when it decides whether to remand a case. If the plaintiff has

attempted to manipulate the forum, the court should take this behavior into account” in

determining whether the balance of factors supports a remand of the state law claims.

Carnegie-Mellon, 484 U.S. at 357. Exercise of that authority is generally discouraged

where, as here, the court “has dismissed all claims over which it has original

jurisdiction.” 28 U.S.C. § 1367(c)(3); see Gamel v. City of Cincinnati, 625 F.3d 949, 952

(6th Cir. 2010) (“When all federal claims are dismissed before trial, the balance of

considerations usually will point to dismissing the state law claims, or remanding them to

state court if the action was removed.”) (quoting Musson Theatrical, Inc. v. Fed. Exp.

Corp., 89 F.3d 1244, 1254-55 (6th Cir. 1996)).

Defendants urge this Court to retain jurisdiction for three reasons, none of which

the Court finds availing. First, Defendants argue that they have asserted federal

counterclaims pursuant to 28 U.S.C. § 1331. (Doc. 12 at 14). But, as Defendants very

well know, federal question jurisdiction under § 1331 is proper “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). And, “it is well settled that

federal counterclaims and defenses are inadequate to confer federal jurisdiction.” Chase

Manhattan Mortg. Corp. v. Smith, 507 F.3d 910, 914-15 (6th Cir. 2007) (internal

quotations omitted). So, the counterclaims cannot convey jurisdiction.

Second, Defendants argue that Thor’s patent applications will inevitably still be

part of the case. (Doc. 12 at 14-15). But, despite Defendants’ urging that issues of patent

law are imbedded in Plaintiff’s Complaint, Defendants do not attempt to demonstrate that

any of Plaintiff’s remaining state law claims “aris[e] under” federal patent law. Gunn,

568 U.S. at 257. So, the Court does not consider that either.

Finally, Defendants argue that Plaintiff has engaged in improper forum

manipulation. (Doc. 12 at 15). But, the plaintiff is the master of its complaint and “is not

required to pursue theories it has not prepared and does not wish to pursue.” Innovation

Ventures, LLC v. Custom Nutrition Lab’ys, LLC, 912 F.3d 316, 331 (6th Cir. 2018).

Plaintiff voluntarily dismissed Calvary I in the early stages, before any ruling on its

motion for temporary restraining order, and refiled in state court the same day. There is

no forum manipulation and none of the Carnegie-Mellon factors weigh in favor of

exercising supplemental jurisdiction over Plaintiff’s remaining state law claims.

Accordingly, the Court remands Plaintiff’s remaining state law claims to the State

Court from which they were removed.

C. Attorneys’ Fees and Costs

The final issue to resolve is Plaintiff’s request for attorney fees related to the

motion to remand. (Doc. 10 at 10-12). When a district court grants a motion to remand,

it may “require payment of just costs and any actual expenses, including attorney fees,

incurred as a result of the removal.” 28 U.S.C. § 1447(c). The standard for awarding

fees and costs after remanding a removed case “should turn on the reasonableness of the

removal.” Martin v. Franklin Capital Corp., 546 U.S. 132, 141 (2005). Courts may

award attorney’s fees under § 1447(c) “only where the removing party lacked an

objectively reasonable basis for seeking removal.” Id. Conversely, “when an objectively

reasonable basis exists, fees should be denied.” Id.

The Court finds that Plaintiff is not entitled to fees and costs incurred with the

motion to remand. Defendants’ basis for removal was not objectively unreasonable.

Indeed, the Court found it had subject matter jurisdiction over Plaintiff’s declaratory

judgment claim pursuant to 28 U.S.C. § 1338(a). No costs or fees will be rewarded.

V. CONCLUSION

Based upon the foregoing, Plaintiff Calvary Industries, Inc.’s declaratory judgment

claim is DISMISSED WITH PREJUDICE to the extent that it seeks judgment

declaring Chris Berger as an inventor of Thor’s pending patent applications. Plaintiff’s

motion to remand (Doc. 10) is GRANTED with respect to the remaining state law

claims. The remaining state law claims are REMANDED to the State Court (the Butler

County Court of Common Pleas) from which they were removed. The parties shall bear

their own costs and fees. The Clerk shall enter judgment accordingly, whereupon this

case is TERMINATED on the docket of this Court.

IT IS SO ORDERED.

Date: 1/30/2023 s/Timothy S. Black

Timothy S. Black

United States District Judge