Charles Phillip Maxwell v. THE STANLEY WORKS, INC., GEORGE WANNOP, and MIDLAND DESIGN, INC.

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1298
CHARLES PHILLIP MAXWELL,
Plaintiff-Appellant,
v.
THE STANLEY WORKS, INC., GEORGE WANNOP,
and MIDLAND DESIGN, INC.,
Defendants-Appellees,
and
HUSKY PROFESSIONAL TOOLS,
Defendant-Appellee.
Charles Phillip Maxwell, of Nashville, Tennessee, pro se.
William P. Atkins, Pillsbury Winthrop Shaw Pittman, LLP, of McLean, Virginia, for
defendants-appellees. Of counsel were Guillermo E. Baeza and William B. Jakes, III.
Appealed from: United States District Court for the Middle District of Tennessee
Judge William J. Haynes, Jr.

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NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1298
CHARLES PHILLIP MAXWELL,
Plaintiff-Appellant,
v.
THE STANLEY WORKS, INC., GEORGE WANNOP,
and MIDLAND DESIGN, INC.,
Defendants-Appellees,
and
HUSKY PROFESSIONAL TOOLS,
Defendant-Appellee.
Appeal from the United States District Court for the Middle District of Tennessee in case
no. 3:06-CV-0201, Judge William J. Haynes, Jr.
__________________________
DECIDED: January 8, 2008
__________________________
Before MICHEL, Chief Judge, RADER and MOORE, Circuit Judges.
PER CURIAM.
Charles Phillip Maxwell (Maxwell), appeals the July 11, 2006 decision of the
United States District Court for the Middle District of Tennessee granting Midland
Design, Inc. (Midland) and George Wannop’s (Wannop) joint motion to dismiss, as well
as The Stanley Works’ (Stanley) motion to dismiss his causes of action for failure to
state a claim upon which relief could be granted. We affirm.

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BACKGROUND
This is a dispute over patent ownership. Maxwell claims he is the sole inventor
of a rotational ratchet wrench that was later patented by Midland with Wannop listed as
the sole inventor. In 1981, Maxwell allegedly offered to sell a wrench invention to
Stanley. Maxwell alleges that Stanley declined the offer and on or about this same time
he abandoned a patent application for his wrench invention. On October 22, 1991, the
United States Patent and Trademark Office (PTO) issued United States Patent No.
5,058,463 (the ’463 patent) for a “Ratchet Wrench with Dual Rotating Constant Drive
Handle.” The ’463 patent was assigned to Midland and Wannop is listed as the sole
inventor. On September 14, 2002, Midland licensed the ’463 patent to Stanley and the
license was recorded at the PTO on May 5, 2003.
On March 13, 2006 Maxwell filed a complaint seeking, among other things a
declaratory judgment that: (1) he is the owner and sole inventor of the ’463 patent; (2)
the same patent is void; and (3) alternatively that he has co-ownership of the patent.
Maxwell alleges that the wrench described in the ’463 patent is the same wrench he
invented and offered for sale to Stanley in 1981.
Stanley filed a motion to dismiss on May 25, 2006, which was sent to a residence
instead of Maxwell’s “general delivery” address of record. On June 12, 2006, Maxwell
filed an opposition to Stanley’s motion to dismiss as well as two other motions, in which
Maxwell urged the court to set aside Stanley’s motion to dismiss for improper service.
On June 13, 2006, Midland and Wannop also moved to dismiss Maxwell’s complaint.
In an order signed on June 28, 2006, the court concluded that Maxwell had
actual notice of Stanley’s motion to dismiss as of May 31, 2006, as Maxwell stated as
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much in his motion, and therefore Maxwell had ample time to respond. Nevertheless,
the court ordered Stanley to serve the motion to dismiss to Maxwell’s “general delivery”
address of record after which Maxwell would have ten days in which to file “any
additional evidence in opposition to Stanley’s motion to dismiss.”
On June 30, 2006, Maxwell filed a revised response in opposition to Stanley’s
motion to dismiss which had comments relating to both pending motions to dismiss.
Stanley filed its notice of compliance with the order to serve the motion to dismiss to
Maxwell at the “general delivery” address of record on July 5.
On July 11, 2006, the trial court issued an order granting the appellees’ motions
to dismiss. Maxwell appealed. This court has jurisdiction over this matter pursuant to
38 U.S.C. § 1295(a)(1).
DISCUSSION
First, Maxwell argues that his due process rights were violated when the district
court granted Stanley’s motion to dismiss without allowing Maxwell ten days to respond.
We do not agree. “The essential requirements of due process . . . are notice and an
opportunity to respond.” Cleveland Bd. of Educ. v. Loudermill, 470 U.S. 532, 546
(1985). Maxwell conceded to receiving Stanley’s motion to dismiss on May 31, 2006,
despite the fact that the motion was sent to a residence instead of the “general delivery”
address on record with the court. Twelve days later, on June 12, 2006, Maxwell filed a
twenty-three page opposition. The district court stated that Maxwell would have ten
days “in which to file any additional evidence in opposition to Stanley’s motion to
dismiss,” after Stanley served the motion to Maxwell at the “general delivery” address of
record. Maxwell filed a revised response in opposition on June 30, 2006. Stanley filed
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its notice of compliance on July 5. On July 11, 2006 the district court granted appellees’
motions to dismiss. Though the July 11 district court order issued fewer than ten days
after Stanley filed its notice of compliance, the July 11 order did not fail to comport with
due process. Maxwell had actual notice of Stanley’s motion to dismiss as of May 31,
had the opportunity to respond, and in fact filed a revised response before the district
court issued its order dismissing the case. Therefore Maxwell’s due process rights were
not violated.
Second, Maxwell argues that the Supreme Court’s decision in MedImmune, Inc.
v. Genentech, Inc., 127 S. Ct. 764, 771 (2007), which was decided after the district
court’s decision, requires a reversal of the district court’s dismissal of the declaratory
judgment claim for invalidity. Prior to Medlmmune, our case law required that there be
“both (1) an explicit threat or other action by the patentee, which creates a reasonable
apprehension on the part of the declaratory plaintiff that it will face an infringement suit,
and (2) present activity which could constitute infringement or concrete steps taken with
the intent to conduct such activity.” See, e.g., BP Chems. Ltd. v. Union Carbide Corp.,
4 F.3d 975, 978 (Fed. Cir. 1993). However, “[t]he Supreme Court’s opinion in
Medlmmune represents a rejection of our reasonable apprehension of suit test.”
SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1380 (Fed. Cir. 2007).
In MedImmune, the Supreme Court held that for a court to have jurisdiction over
a declaratory judgment “the facts alleged, under all the circumstances, [must] show that
there is a substantial controversy, between parties having adverse legal interest, of
sufficient immediacy and reality to warrant” relief. 127 S. Ct. at 771. Under the
MedImmune standard, Maxwell still falls short of presenting a case or controversy
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2007-1298 5
necessary to provide a court with subject matter jurisdiction over a declaratory
judgment. Maxwell proffers and avers no evidence of adverse legal interests of
sufficient immediacy and reality. Maxwell presents no evidence that he is engaging in
activity that would subject him to a patent infringement suit. Further, the record does
not show that Midland or Wannop have taken a position that puts Maxwell in the
situation of either “pursuing arguably illegal behavior or abandoning that which he
claims a right to do.” SanDisk Corp., 480 F.3d at 1381. Thus, Maxwell’s declaratory
judgment claims were properly dismissed for lack of subject matter jurisdiction.
We have considered, but reject the remainder of Maxwell’s arguments.1
Because Maxwell failed to state a claim upon which relief could be granted, we affirm
the judgment of the district court.
1 Appellees argue that this case should be dismissed for procedural
reasons. Appellees contend that Sixth Circuit case law interpreting Federal Rule of
Appellate Procedure 24(a) and 28 U.S.C. § 1915(a)(3) requires Maxwell to pay his filing
fees within thirty days of the district court’s certification that an appeal in forma pauperis
(IFP) would not be taken in good faith. See Callihan v. Schneider, 178 F.3d 800, 803
(6th Cir. 1999). However, as Sixth Circuit case law instructs us to construe filings by
pro se litigants liberally, we decline to dismiss Maxwell’s appeal, which was filed within
the thirty day window, because Maxwell paid the required filing fees thirty-eight days
after the district court’s certification. See Owens v. Keeling, 461 F.3d 763, 776 (6th Cir.
2006) (“It is understandable that Owens . . . proceeding pro se, would not be apprised of
the specific procedure that is set forth in Rule 24(a)(5) for pursuing IFP status on
appeal . . . .”).

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