Galen J. Suppes v. Kattesh V. Katti, et al.

Docket No. 2017-1142

October 3, 2017

Brief summary: DC dismissal of Mr. Suppes complaint against university employer for declining to file patent applications for certain of his ideas and not allowing him to do so without assigning the same to the university on Constitutional grounds affirmed.

Summary: Mr. Suppes appealed DC judgment dismissing (with prejudice for lack of subject matter jurisdiction) his complaint against the University of Missouri for declining to file patent applications for certain of his ideas, yet simultaneously prohibit[ing] him from filing his own patent applications and, in cases where he did file his own applications, require[ing] him to assign those applications to the University” in violation of his Constitutional rights (the Tenth Amendment in that the University excercised power reserved by the Constitution to the States or the people, Article I (Section 8, clause 8, “securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”) and the Fourteenth Amendment by “stifl[ing] the progress of science by selectively enforcing punitive action against” him, and the Fifth Amendment by failing to compensate him). The FC panel opinion explains that “employment agreement with the University specified that his employment was subject to the rules, orders, and regulations of the University” which “include statements that the University ‘shall have ownership and control of any Invention or Plant Variety developed in the course of the Employee’s service to the University.” The regulations define “‘Invention’…as including both the ‘[c]onception of the idea’ and ‘[r]eduction to practice of the inventive concept.’” The DC “concluded that the parties’ true dispute is one of state contract law” and found the Tenth Amendment “acts solely as a restraint on the power of Congress, and thus…inapplicable to the University”. Mr. Suppe’s contention that his “‘Inventive Thought’-inventions made in the course of his employment but not yet the subject of a patent or patent application” was protected by Article I of the Constitution was rejected by the DC in view of Univ. New Mexico (FC 2003) holding that 35 USC § 261 does not “preempt[] any private contract for assignment of rights to an invention by vesting rights in the inventor” (“Section 261[] explicit[ly] contemplate[es]…assignment by the inventor” and “allow[s] for such contracts”), and the FC panel agreed (“while it is true that, under Section 261, patents vest in the inventor by operation of law, contracts assigning interests in patents are not preempted by Section 261”). The FC panel also concluded it had jurisdiction since the question of whether “§ 261 preempts assignment contracts prior to any effort to seek a patent on those invention” “‘arises under’ patent law”, and that such contracts are “a matter of state law and…not preempted by the Patent Act”. And it explained that “the Constitution’s limitation of patent rights to ‘a limited time’ refers to the allocation of rights vis-à-vis the inventor and the public” and “has nothing whatsoever to with the allocation of rights between inventors and patent assignees.” Finally, the FC panel concluded that “[t]o the extent…Mr Suppes is arguing that the contract is void as a matter of public policy, that is once again a matter of state contract law.” Thus, it “determine[d] that there is no federal question jurisdiction pursuant to the Constitution or the Patent Act” and affirmed the DC opinion.

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