Suppes v. Katti
710 F. App'x 883
| Fed. Cir. | 2017Background
- Galen J. Suppes, a former University of Missouri chemical engineering professor, signed an employment agreement subjecting his inventions to University rules that claim ownership of inventions developed in the course of employment.
- The University declined to file patents for some of Suppes’s ideas, barred him from filing independently, and in some cases required assignment of applications he filed.
- Suppes sued University employees in federal court seeking declaratory relief under constitutional provisions and § 1983, alleging Tenth, Article I (patent clause), Fifth, and Fourteenth Amendment violations and requesting damages and removal of state cases.
- The district court construed the complaint as § 1983 claims and dismissed for lack of subject-matter jurisdiction, concluding the dispute was one of state contract law and that neither the Constitution nor the Patent Act invalidated the University’s assignment rules.
- Suppes appealed, arguing the Constitution and case law protect "Inventive Thought" (unpatented inventions) from contractual assignment and that University policies do not promote the Progress of Science.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether appellate jurisdiction exists under federal patent law | Appellant challenges constitutionality of University assignment policy as affecting patent rights | University says dispute is state contract law, not federal patent question | Court: Appellate jurisdiction exists under Gunn because the patent-law question is actually disputed and substantial for the appeal |
| Whether the Constitution or 35 U.S.C. § 261 preempts or forbids pre-patent assignments | Suppes: Constitution reserves unpatented "Inventive Thought" to inventors; assignments violate Article I patent limits | University: Assignments are permissible; § 261 contemplates assignments and does not preempt state contract law | Court: Neither the Constitution nor § 261 preempts state-law contracts assigning rights before patent filing; allocation is a state contract-law matter |
| Whether requiring assignment without compensation is a taking under the Fifth Amendment | Suppes: Mandatory assignment without just compensation is an unconstitutional taking | University: Assignment contracts are not presumptively invalid as takings; governed by contract law | Court: No federal taking; assignment requirement is not barred by Constitution or federal patent law |
| Whether federal courts can seize related state-law claims or award damages absent a federal cause of action | Suppes: Sought removal and federal adjudication of state suits and damages | University: Federal court lacks power to adjudicate purely state contract claims or award damages without federal basis | Court: District court properly declined jurisdiction over state-law suits and naked damages claims |
Key Cases Cited
- New York v. United States, 505 U.S. 144 (1992) (Tenth Amendment limits analyzed as restraint on Congress, not applicable to state instrumentality)
- Regents of Univ. of N.M. v. Knight, 321 F.3d 1111 (2003) (Patent Act § 261 does not preempt state-law contracts assigning patent interests)
- Gunn v. Minton, 568 U.S. 251 (2013) (four-factor test for when a state-law claim "arises under" federal patent law for jurisdiction)
- Parratt v. Taylor, 451 U.S. 527 (1981) (elements of a § 1983 action require state action and deprivation of federal rights)