Ameranth, Inc. v. Brink Software, Inc. et al

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
AMERANTH, INC.
Plaintiff,
v.
BRINK SOFTWARE, INC., a California
corporation; and PAR TECHNOLOGY
CORPORATION, a Delaware
corporation,
Defendants.
Case No.: 3:25-cv-2302-RSH-BLM
ORDER DENYING PLAINTIFF’S
MOTION TO REMAND
[ECF No. 20]
AND RELATED CROSS-COMPLAINT
Before 	the 	Court 	is 	a 	motion 	to 	remand 	filed 	by 	plaintiff 	Ameranth, 	Inc.
(“Ameranth”). ECF No. 20. Pursuant to Local Civil Rule 7.1(d)(1), the Court finds the
motion presented appropriate for resolution without oral argument. For the reasons below,
the Court denies Plaintiff’s motion.
I. 	BACKGROUND
A. 	Parties’ Allegations
This case arises from a dispute as to the terms of a licensing agreement between
plaintiff 	Ameranth 	and 	defendant 	PAR 	Technology 	Corporation 	(“PAR”) 	and 	its
subsidiary, defendant Brink Sofware, Inc. (“Brink”). The Amended Complaint, ECF No.
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18, and Amended Counterclaim, ECF No. 25, allege as follows.
1. 	The Brink Licensing Agreement
Plaintiff Ameranth is a “computing technology and intellectual property licensing”
company located in San Diego, California. ECF No. 18 ¶ 12. Between 2006 and 2008,
Ameranth 	developed 	multiple 	products, 	including 	a 	prototype 	hosted 	point-of-sale
software system. Id. In 2008, Ameranth halted new product development to focus on
intellectual property licensing. Id. ¶ 13.
In late 2008, four former Ameranth employees founded defendant Brink, a company
that provides cloud-based point-of-sale software to restaurant clients. Id. ¶ 14; ECF No. 25
¶ 82. In 2011, Brink and Plaintiff entered into a licensing agreement. ECF Nos. 18 ¶ 17; 25
¶ 85. 	The agreement granted Brink a “Patent License” for certain “Licensed Patents,”
which the agreement defined as a group of three patents—U.S. Patent Nos. 6,384,850,
6,871,325, and 6,982,733—“all reissues and reexaminations” of these patents, and “all
patents claiming priority from any applications from which any of the” patents issued. ECF
No. 18, Ex. A § 1.3.
Under the licensing agreement, Brink was required to make two lump sum payments
“in consideration for the Patent License for the period up to and including” the year
following the signing of the contract, id. § 5.1, and to pay “an ongoing royalty for Brink’s
online/mobile food/drink ordering/menu hosting system/service for the period” following
the period covered by the lump sum payments, id. § 5.2. The agreement provided that
license fees would no longer be due “if all claims of [Plaintiff’s] Licensed Patents are
finally held invalid and/or the patents are held to be unenforceable (after all appeals are
exhausted) prior to the date that such fees are otherwise due . . . .” Id. § 5.3.
2. 	PAR Acquires Brink and Ceases Royalty Payments
In 2014, defendant PAR acquired Brink and integrated Brink’s line of services into
its own systems. ECF Nos. 18 ¶ 28; 25 ¶ 92. While PAR had its own licensing agreement
with Plaintiff, PAR continued paying royalties to Plaintiff under the Brink licensing
agreement. ECF Nos. 18 ¶ 29; 25 ¶ 98.
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In 2020, defendant PAR ceased paying royalties to Plaintiff under either agreement.
ECF Nos. 18 ¶¶ 32-34; 25 ¶ 99. As grounds for nonpayment, Defendants cited the alleged
invalidity of Plaintiff’s patents, as well as PAR’s cessation of selling Brink software and
services. ECF No. 25 ¶¶ 95, 101, 106. In response, Plaintiff declared defendant PAR to be
in breach of the Brink licensing agreement. ECF Nos. 18 ¶ 33; 25 ¶ 104. The Parties
proceeded to mediation in early 2021 but failed to resolve their dispute. ECF Nos. 18 ¶ 36;
25 ¶ 110.
3. 	Subsequent Ameranth Patents
Since the Parties’ failed mediation, Ameranth has continued to apply for and obtain
newly issued patents in the same family as the Licensed Patents. ECF Nos. 18 ¶ 55; 25 ¶¶
113, 114, 116. Defendants assert these patents do not create new royalty obligations under
the Brink licensing agreement, while Plaintiff contends the new patents qualify as Licensed
Patents, for which Defendants owe royalties, under the Brink licensing agreement. ECF
Nos. 18 ¶ 57; 25 ¶ 124.
B. 	Procedural History
On July 23, 2025, Plaintiff brought this action in San Diego Superior Court to
recover royalty fees under the Brink licensing agreement. ECF No. 1 ¶¶ 1-3. The Complaint
asserted causes of action for: (1) breach of contract; (2) declaratory relief; and (3) unjust
enrichment. ECF No. 1-2.
On September 3, 2025, Defendants filed an Answer. Id., Ex. B. The following day,
Defendants filed a counterclaim seeking declaratory judgments of non-infringement,
invalidity, unenforceability, and misuse of patents that Plaintiff argues fall within the scope
of the Brink licensing agreement. Id., Ex. C. That same day, Defendants removed the case
to this Court under 28 U.S.C. § 1454. ECF No. 1 ¶ 10.
On October 20, 2025, Plaintiff filed an Amended Complaint to correct the
inadvertent omission of exhibits from its original Complaint. ECF Nos. 17, 18. On
November 10, 2025, Plaintiff filed the instant motion to remand, as well as a motion to
dismiss Defendants’ counterclaim for lack of subject matter jurisdiction, and a motion to
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strike Defendants’ answer and counterclaim. ECF No. 20. On January 9, 2026, Defendants
filed an Amended Counterclaim that withdrew their counterclaims requesting a declaratory
judgment of patent non-infringement, and added a counterclaim for equitable estoppel.
ECF Nos. 25, 25-2 (redline of changes to the original counterclaim). Plaintiff again moved
to strike and dismiss the Amended Counterclaim. ECF No. 30.
The motion to remand, ECF No. 20, is fully briefed. ECF Nos. 26 (Opposition), 29
(Reply).
II. 	LEGAL STANDARD
“The removal jurisdiction of the federal courts is derived entirely from the statutory
authorization of Congress.” Libhart v. Santa Monica Dairy Co., 592 F.2d 1062, 1064 (9th
Cir. 1979). A defendant may remove to federal court “any civil action brought in a State
court of which the district courts of the United States have original jurisdiction . . . .” 28
U.S.C. § 1441(a).
“The basic statutory grants of federal-court subject-matter jurisdiction are contained
in 28 U.S.C. §§ 1331 and 1332.” Arbaugh v. Y&H Corp., 546 U.S. 500, 513 (2006). “A
plaintiff properly invokes § 1331 jurisdiction when she pleads a colorable claim ‘arising
under’ the Constitution or laws of the United States. She invokes § 1332 jurisdiction when
she presents a claim between parties of diverse citizenship that exceeds the required
jurisdictional amount, currently $75,000.” Id. (citation omitted).
Federal question jurisdiction extends to “any civil action arising under any Act of
Congress relating to patents . . . .” 28 U.S.C. § 1338(a). A case arises under federal patent
laws if (1) its cause of action is created by patent law, or (2) the asserted claims “necessarily
raise” an “actually disputed and substantial” question of patent law “capable of resolution
in federal court without disrupting the federal-state balance approved by Congress.” Gunn
v. Minton, 568 U.S. 251, 257-58 (2013). The Supreme Court has called the second category
of cases—in which state law claims can give rise to federal jurisdiction—“special and
small.” Id. at 258.
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Removal is narrowly construed, and there is a “strong presumption against removal.”
Hunter v. Philip Morris USA, 582 F.3d 1039, 1042 (9th Cir. 2009) (citation omitted). The
defendant “always has the burden of establishing that removal is proper.” Casola v.
Dexcom, Inc., 98 F.4th 947, 954 (9th Cir. 2024).
III. 	DISCUSSION
Defendants allege two bases for removing this case from state court. First,
Defendants allege their counterclaims confer federal jurisdiction because they arise under
federal patent law. ECF No. 1 at 4-5. Second, Defendants allege that the Amended
Complaint “revolve[s] around matters that implicate and arise under” federal patent law.
Id. at 5.
Plaintiff does not dispute that Defendants’ counterclaims arise under federal patent
law; instead, it argues that Defendants’ counterclaims do not confer federal jurisdiction
because they should be dismissed as duplicative of Defendants’ affirmative defenses. ECF
No. 20-1 at 18. Plaintiff also contends that its breach-of-contract state-law claims do not
“necessarily raise” patent law issues; therefore, its complaint “is not a suit under the patent
laws of the United States” and is not subject to federal jurisdiction. ECF No. 20-1 at 12
(quoting Luckett v. Delpark, Inc., 270 U.S. 496, 502-503 (1926)).
A. 	Removal under 28 U.S.C. § 1454
The Court begins with Defendants’ first basis for removal. Under 28 U.S.C. § 1454:
A civil action in which any party asserts a claim for relief arising under
any Act of Congress relating to patents . . . may be removed to the
district court of the United States for the district and division embracing
the place where the action is pending.
This provision was “intended to provide federal courts . . . with a broader range of
jurisdiction; that is, with jurisdiction over claims arising under the patent laws even when
asserted in counterclaims, rather than in an original complaint.” Vermont v. MPHJ Tech.
Invs., LLC, 803 F.3d 635, 644 (Fed. Cir. 2015).
Here, Defendants’ counterclaims for patent invalidity provide a basis for removal
under § 1454 because they arise under federal patent law. See Rembrandt Diagnostics, LP
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v. Innovacon, Inc., No. 16-cv-0698 CAB (NLS), 2018 U.S. Dist. LEXIS 231599, at *10
(S.D. Cal. Mar. 23, 2018) (“[Defendant’s] . . . counterclaim for the invalidity . . . of
[Plaintiff’s] patents that are the subject of the contract claim could not be heard in state
court and give rise independently to federal jurisdiction.”); Ameranth, Inc. v. Splick-It, Inc.,
No. 17cv1093 DMS (WVG), 2017 U.S. Dist. LEXIS 224205, at *5 (S.D. Cal. Aug. 4,
2017) (patent invalidity claim “arises under the Patent Act, and therefore provides a basis
for removal under § 1454”); Schwarzkopf Dev. Corp. v. Ti-Coating, Inc., 800 F.2d 240,
244 (Fed. Cir. 1986) (declaratory judgment counterclaims for “patent invalidity . . . are
within the jurisdiction of the district court under § 1338”); Microsoft Corp. v. GeoTag, Inc.,
817 	F.3d 	1305, 	1312 	n.8 	(Fed. 	Cir. 	2016) 	(“whether 	[a 	patent] 	is 	invalid” 	is
“unquestionably” an issue “arising under federal patent law”). See also Honeywell Int’l
Inc. v. Opto Elecs. Co., 135 F.4th 170, 177-79 (4th Cir. 2025) (citing Medtronic, Inc. v.
Mirowski Family Ventures, LLC, 571 U.S. 191, 196-98 (2014)) (concluding patent misuse
declaratory counterclaims “arise under” patent law because they could defend against a
hypothetical patent infringement suit).
Plaintiff contends that “Defendants cannot rely on their . . . counterclaims for
jurisdiction” because Defendants’ counterclaims are “simply affirmative defenses cast as
counterclaims” and therefore “should be dismissed.” ECF No. 20-1 at 18. In support of this
argument, Plaintiff cites out-of-circuit cases where counterclaims were either dismissed or
were not permitted because they were duplicative of affirmative defenses; however, in
neither case were counterclaims dismissed on a motion to remand, or as part of a
jurisdictional analysis. See id. (citing L-3 Commc’ns Corp. v. Jaxon Eng’g & Maint., Inc.,
69 F. Supp. 3d 1136, 1145 (D. Colo. 2014) (order on motion for summary judgment) and
Rayman v. Peoples Sav. Corp., 735 F. Supp. 842, 851-853 (N.D. Ill. 1990) (order on motion
for leave to file a counterclaim)). Plaintiff mischaracterizes another case, Epic Games, Inc.
v. Acceleration Bay LLC, which in fact contradicts Plaintiff’s position. See ECF No. 20-1
at 18; No. 4:19-CV-04133-YGR, 2020 WL 1557436 (N.D. Cal. Apr. 1, 2020). The Epic
Games court declined to strike counterclaims that were redundant of affirmative defenses
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because, independent of a plaintiff’s claims, “[a] defendant in a patent case has ‘something
to gain from a counterclaim declaration of invalidity’—it can go on to develop its products
without fear of infringing the invalid patent.” 2020 WL 1557436 at *3 (citation omitted).
Plaintiff has not provided support for its argument that Defendants’ counterclaims
should be dismissed on a motion to remand rather than on a ruling on the merits; therefore,
at this stage, the Court declines to address the separate question of whether Defendants’
counterclaims would ultimately survive on the merits.
Because federal jurisdiction exists based on at least Defendants’ patent invalidity
counterclaims, the Court declines to assess whether it could exercise jurisdiction based on
Defendants’ other counterclaims, or Plaintiff’s claims, at this time. See 28 U.S.C. § 1454
(“a claim” arising under federal patent law provides grounds for removal of the entire
action); Wisc. Dep’t of Corr. v. Schacht, 524 U.S. 381, 386 (1998) (“[T]he presence of
even one claim ‘arising under’ federal law is sufficient to satisfy the requirement that the
case be within the original jurisdiction of the district court for removal.”).
IV. 	Conclusion
For the reasons set out above, Plaintiff’s motion to remand [ECF No. 20] is
DENIED.
IT IS SO ORDERED.
Dated: March 5, 2026 	_________________________
Hon. Robert S. Huie
United States District Judge
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