Oleh Weres v. Nancy H. Weres

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
04-1233
OLEH WERES,
Plaintiff-Appellant,
v.
NANCY H. WERES,
Defendant-Appellee.
__________________________
DECIDED: January 11, 2005
__________________________
Before LOURIE, CLEVENGER, and SCHALL, Circuit Judge.
PER CURIAM.
Oleh Weres appeals from the judgment of the United States District Court for the
Northern District of California dismissing his complaint. Weres v. Weres, No. 03-2738
(N.D. Cal. Jan. 8, 2004). We affirm.
I
Oleh Weres and Nancy Weres were once married, but were divorced in
California. Pursuant to orders of the Superior Court of California in Napa County, the
community property of the couple was settled by stipulating that Nancy and Oleh are co-
owners of four issued patents, and co-owners of any rights or benefits that may result
from a pending application for a fifth patent. The Superior Court also decreed that each
co-owner was barred from licensing or otherwise transferring any interest in the subject

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patents without the written consent of the other owner. Any monetary benefits flowing
from the subject patents also were decreed to require mutual consent, and both parties
were bound to sign any documents necessary to register the joint ownership of the
subject patents. The order of the Superior Court did not refer to which party would
shoulder the financial burden of maintaining registration of the patents. The order did
provide that the court retained jurisdiction to make any further orders necessary to carry
out and enforce the terms and conditions of the settlement.
Oleh Weres appealed the property settlement order of the Superior Court to the
Court of Appeal of the State of California, First Appellate District, Division One. On
appeal, Oleh Weres challenged the authority of the Superior Court to award joint
ownership of the patents as a division of community property. He also challenged as
illegal under California law the provisions of the property settlement order that required
him to get permission from the co-owner to license or assign the patents, to share the
economic fruits of the patents, and to sign jointly any required filings. The appellate
court rejected both contentions, holding as to the latter that "[t]hese provisions are
standard, proper and well within the trial court's discretion. If respondent [Mrs. Weres]
were to impede the development of these community assets, the court has the power to
take appropriate action." Weres v. Weres, No. A090448, slip op. at 10 (Cal. Ct. App.
Apr. 23, 2001).
On April 23, 2001, the appellate court sustained in full the property settlement
orders of the Superior Court.
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II
Subsequently, Oleh Weres filed suit in the federal district court, seeking to
collaterally attack the judgment of the California appellate court. In his complaint, he
alleged that the court had jurisdiction under 28 U.S.C. § 1338(a) (general patent law
jurisdiction) and more particularly under 35 U.S.C. § 262 (providing for joint ownership
of patents). He alleged that the California divorce court exceeded its authority by
requiring him to share the benefits of the patents with his former spouse. According to
Oleh Weres, the divorce court had power to divide ownership of the patents, but lacked
authority to place any conditions on joint ownership. Because section 262 provides that
a joint owner, absent "any agreement to the contrary," is free to "make, use, offer to sell,
or sell the patented invention . . . without the consent and without accounting to the
other owners," Oleh Weres sought orders from the federal district court that would
prohibit his co-owner from taking any steps to interfere with his sole use and enjoyment
of the co-owned patents. Under Oleh Weres's theory, the provisions of the property
settlement that required sharing the fruits of the patents were null and void, leaving only
the provision for joint ownership. According to Oleh Weres, there is no "agreement to
the contrary" that impedes his right to refuse to share the benefits of ownership with his
former spouse. He also sought $1833.25 as Nancy Weres's share of the maintenance
fees and other costs incurred to perfect and maintain the patents.
III
The district court concluded that Oleh Weres failed to establish that section 262
creates a private cause of action to deliver the relief sought in the complaint, and even if
section 262 could be viewed to sustain jurisdiction, the district court held that Oleh
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Weres's suit is simply a collateral attack on a final state court judgment, in contravention
of the Rooker/Feldman doctrine, which holds that United States district courts do not
have jurisdiction over challenges to state court decisions. Rooker v. Fidelity Trust Co,
263 U.S. 413, 415-16 (1923); District of Columbia Court of Appeals v. Feldman,
460 U.S. 462, 476, 482-83 (1983). Because the very terms of the settlement agreement
that Oleh Weres contends, in federal court, are null and void have been held to be
lawful by the California courts, Oleh Weres is barred from relitigating those issues.
Unless he succeeds in voiding the provisions he dislikes, he cannot enjoy co-ownership
without cooperating with his former spouse. The terms of the divorce property
settlement that restrict Oleh Weres's rights as a co-owner constitute an "agreement to
the contrary" under section 262.
IV
We need not decide whether there is any instance in which section 262 creates
an independent patent law cause of action over which a United States district court
would have jurisdiction, for it is certain that in this case any such jurisdiction would be
ousted by the Rooker/Feldman doctrine. Oleh Weres has had his day in court in
California seeking to upset the terms of the property settlement agreement. As a matter
of California law, he is simply wrong that the divorce court lacks power to affect the
incidents of patent ownership after having divided the ownership interest. Since at least
Lorraine v. Lorraine, 8 Cal. App. 2d 687 (3d Dist. 1935), California courts have both
divided patent ownership and apportioned the benefits of ownership.
Oleh Weres's wish that his former spouse share the maintenance costs of the
patent, while somewhat inconsistent with his primary view that he need not share any of
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the benefits of the patents, is also overwhelmed by the Rooker/Feldman doctrine, as the
district court held. The divorce court's orders specifically provide the avenue of relief
Oleh Weres seeks regarding these costs: he must retreat to the California courts with
his prayer for relief, for any relief granted by a United States district court would
contravene the order of the state court.
For these reasons, we affirm the judgment of the district court dismissing the
complaint.
No costs.
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