Halpern v. Peritec Biosciences Ltd. , 383 F. App'x 943 ( 2010 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
DAVID HALPERN,
Plaintiff-Appellant,
v.
PERITEC BIOSCIENCES, LTD., PERITEC
BIOSCIENCES,
RAJESH K. KHOSLA, AND TIMUR SARAC,
Defendants-Appellees.
__________________________
2010-1042
__________________________
Appeal from the United States District Court for the
Northern District of Ohio in case No. 07-CV-3040, Judge
John R. Adams.
___________________________
Decided: June 23, 2010
___________________________
JOHN A. HUETTNER, of Shaker Heights, Ohio, argued
for plaintiff-appellant.
TIMOTHY W. HAGAN, Dinsmore & Shohl LLP, of Day-
ton, Ohio, argued for defendants-appellees. On the brief
HALPERN v. PERITEC BIOSCIENCES 2
were MICHAEL W. HAWKINS, CHARLES H. BROWN, III, and
JOSHUA A. LORENTZ, of Cincinnati, Ohio.
__________________________
Before RADER, Chief Judge, BRYSON, and DYK, Circuit
Judges.
BRYSON, Circuit Judge.
David Halpern filed a complaint in the United States
District Court for the Northern District of Ohio in which
he asserted ten claims against PeriTec Biosciences, Ltd.,
PeriTec Biosciences, Rajesh Khosla, and Timur Sarac
(together “defendants”). The district court dismissed two
of the claims under Fed. R. Civ. P. 12(b)(6), and exercised
its discretion not to address the remaining claims under
its supplemental jurisdiction. On appeal, Mr. Halpern
challenges the judgment with respect to only one of the
ten claims. For the reasons stated below, we affirm.
I
In his complaint, Mr. Halpern alleged that the defen-
dants selected him to “assist in the design of a catheter
delivery system for tissue-lined [vascular] stents.” As
part of their employment offer, Mr. Halpern alleged, the
defendants agreed to compensate him with a salary,
bonuses, and “equity units” in PeriTec. However, despite
what Mr. Halpern refers to as his subsequent “associa-
tion” with PeriTec, he contends that the employment
agreement formalizing the terms and conditions of his
employment with PeriTec was “never fully executed.” The
complaint further alleged that Mr. Khosla and Mr. Sarac
filed patent applications for two devices that Mr. Halpern
invented—a stent compressing device and a cartridge
device for delivering stents within the vascular system.
Those applications, according to Mr. Halpern, failed to
3 HALPERN v. PERITEC BIOSCIENCES
correctly identify him as the sole inventor of the claimed
devices.
The second claim in Mr. Halpern’s complaint was en-
titled “Patent Rights” and was brought under the author-
ity of the Patent Act, 35 U.S.C. §§ 1 et seq. In that claim,
Mr. Halpern alleged that he had invented and reduced to
practice the stent compressing device and the cartridge
device, but that defendants Sarac and Khosla had filed
patent applications for those devices in which they im-
properly named themselves as inventors and failed to
name him as the sole inventor. As relief, Mr. Halpern
sought an order enjoining the defendants “from ‘patent
pending’ marketing, testing, and the exercise of provi-
sional patent rights . . . during the pendency of proceed-
ings to correct inventorship on the patent applications.”
The defendants moved to dismiss all the claims of the
complaint. With respect to the Patent Rights claim, the
defendants moved to dismiss for failure to state a claim
upon which relief could be granted. In their motion, they
relied principally on a letter agreement dated March 24,
2005, to which Mr. Halpern had referred in his complaint.
That letter stated that the employment agreement be-
tween PeriTec and Mr. Halpern was made contingent
upon Mr. Halpern’s execution of certain other documents,
which included a document entitled “Confidential Infor-
mation and Invention Assignment Agreement.” Para-
graph 5 of the Confidential Information and Invention
Assignment Agreement provided as follows, in pertinent
part:
Assignment of Inventions. Without further
compensation, I hereby agree promptly to disclose
to the Company and I hereby assign and agree to
assign to the Company or its designee, my entire
HALPERN v. PERITEC BIOSCIENCES 4
right, title, and interest in and to all Inventions
which I may solely or jointly develop or reduce to
practice during the period of my employment or
consulting relationship with the Company which
(a) pertain to any line of business activity of the
Company, (b) are aided by the use of time, mate-
rial or facilities of the Company, whether or not
during normal working hours, or (c) relate to any
of my work during the period of my employment
or consulting relationship with the Company,
whether or not during normal working hours. I
acknowledge a permanent obligation promptly to
execute assignments of Inventions covered by
conditions (a), (b) or (c), herein, to the Company
even after my relationship with the Company has
been terminated.
That document bears Mr. Halpern’s signature and the
date March 29, 2005. The defendants argued that by
executing that document, Mr. Halpern prospectively and
unequivocally surrendered his alleged patent rights at the
outset of his employment with PeriTec. That assignment
of rights was applicable to the two inventions at issue in
this case, the defendants argued, because both inventions
relate to the work that Mr. Halpern was hired to perform.
Accordingly, the defendants argued that the Patent
Rights claim should be dismissed.
The district court dismissed all of Mr. Halpern’s
claims. The court dismissed the Patent Rights claim
under Rule 12(b)(6), stating that Mr. Halpern “has abso-
lutely no right[s] in the pending patent applications”
because he had assigned those rights to PeriTec. The
court added that “[a]ssuming arguendo that the plaintiff
does have rights in the applications, he should proceed
5 HALPERN v. PERITEC BIOSCIENCES
through the U.S. Patent and Trademark Office for the
relief he currently seeks from this Court.”
On appeal, Mr. Halpern does not challenge the dis-
trict court’s order of dismissal with respect to any of the
claims of the complaint except the Patent Rights claim.
Moreover, even with respect to the Patent Rights claim,
Mr. Halpern now agrees that the claim should have been
dismissed, but he argues that the dismissal should have
been on a different ground. His appeal is directed solely
at the court’s decision to dismiss that claim under Rule
12(b)(6) for failure to state a claim upon which relief could
be granted. Even though he argued in the district court
that the court had jurisdiction over the Patent Rights
claim, Mr. Halpern has reversed field in this court and
now contends that the district court should have dis-
missed that claim under Rule 12(b)(1) for want of jurisdic-
tion. Mr. Halpern has made clear that he is seeking
dismissal on jurisdictional grounds, rather than on the
merits, because he wishes to avoid the possible collateral
estoppel effects of the district court’s ruling that he val-
idly assigned his potential inventorship rights when he
executed the “Confidential Information and Invention
Assignment Agreement” on March 29, 2005. A dismissal
for lack of jurisdiction would not, of course, carry any such
collateral estoppel consequences.
For the reasons set forth below, we do not agree with
Mr. Halpern that the district court lacked jurisdiction to
decide the Patent Rights claim. However, we conclude
that the dismissal for failure to state a claim upon which
relief can be granted should have been predicated solely
on the fact that the patent applications in question had
not issued as patents and that Mr. Halpern therefore did
not have a cause of action in district court to contest the
defendants’ representations as to inventorship.
HALPERN v. PERITEC BIOSCIENCES 6
II
Whether the district court possessed jurisdiction is a
question of law that this court reviews de novo. See
Pennington Seed, Inc. v. Produce Exch. No. 299, 457 F.3d
1334, 1338 (Fed. Cir. 2006). When reviewing the applica-
tion of the Federal Rules of Civil Procedure, we generally
apply the law of the applicable regional circuit. Trilogy
Commc’ns, Inc. v. Times Fiber Commc’ns, Inc., 109 F.3d
739, 744 (Fed. Cir. 1997). When deciding a motion to
dismiss under Rule 12(b)(6), “[t]he district court must
construe the complaint in a light most favorable to the
plaintiff [and] accept all of the factual allegations as true.”
Columbia Natural Res., Inc. v. Tatum, 58 F.3d 1101,
1109 (6th Cir. 1995).
1. Mr. Halpern argues that the district court lacked
jurisdiction over his Patent Rights claim and for that
reason should have dismissed that claim under Rule
12(h)(3). According to Mr. Halpern, because the court
lacked jurisdiction over the claim, it was error for the
court to discuss the employment agreement and the
question whether, as a result of that agreement, he val-
idly assigned any patent rights he might have had in the
two inventions at issue in this case. The defendants
argue that the district court had jurisdiction over Mr.
Halpern’s Patent Rights claim and that the court properly
dismissed that claim on the ground that Mr. Halpern
assigned away any rights he might have had in the appli-
cations. Although we affirm the judgment of the district
court, we disagree with both parties’ arguments on ap-
peal.
Mr. Halpern’s argument ignores the well-established
distinction between a dismissal for lack of federal juris-
diction and a dismissal for failure to state a federal claim.
7 HALPERN v. PERITEC BIOSCIENCES
When a party claims a right arising under federal law,
the federal district court has jurisdiction to decide
whether the plaintiff has a federal cause of action, and a
decision that the plaintiff does not have a cause of action
is a dismissal on the merits, not for lack of jurisdiction.
As the Supreme Court stated in the seminal case of Bell v.
Hood, 327 U.S. 678, 682 (1946), jurisdiction “is not de-
feated . . . by the possibility that the averments might fail
to state a cause of action on which petitioners could
actually recover.” Except in instances in which the aver-
ment of federal jurisdiction is “wholly insubstantial and
frivolous,” or clearly “immaterial and made solely for the
purpose of obtaining jurisdiction,” the Court explained,
“the failure to state a proper cause of action calls for a
judgment on the merits and not for a dismissal for want of
jurisdiction.” Id. at 682-83. The Court put the same point
succinctly in Burks v. Lasker, 441 U.S. 471, 476 n.5
(1979), when it said, “The question whether a cause of
action exists is not a question of jurisdiction.” See also
Jackson Transit Auth. v. Local Div. 1285, Amalgamated
Transit Union, 457 U.S. 15, 21 n.6 (1982); Litecubes, LLC
v. N. Light Prods., Inc., 523 F.3d 1353, 1360-61 (Fed. Cir.
2008); Lewis v. United States, 70 F.3d 597, 602-04 (Fed.
Cir. 1995).
In a recent case that is not materially distinguishable
from this one, we held that an inventorship claim involv-
ing pending patent applications raises a question of
federal patent law, but does not give rise to a private
right of action that can be pursued in a district court.
HIF Bio, Inc. v. Yung Shin Pharms. Indus. Co., 600 F.3d
1347, 1353-54 (Fed. Cir. 2010). Accordingly, we held that
“while the district court has jurisdiction over the cause of
action, it should have dismissed the claim under Rule
12(b)(6) because no private right of action exists.” Id. at
1354. Applying that rule to this case, we hold that the
HALPERN v. PERITEC BIOSCIENCES 8
district court correctly concluded that it had jurisdiction
over the complaint and was not required to dismiss the
complaint under Rule 12(b)(1) and Rule 12(h)(3).
2. While we agree with the defendants that the dis-
trict court had jurisdiction to address the Patent Rights
claim, we reject the defendants’ contention that the court
properly dismissed the complaint based on the assign-
ment agreement that Mr. Halpern signed in March 2005.
The court noted that the assignment agreement was
referenced in the complaint, and under Sixth Circuit law
the agreement was thus made part of the pleadings. See
Jackson v. City of Columbus, 194 F.3d 737, 745 (6th Cir.
1999). The court then concluded that the assignment
agreement “contradicts the plaintiff’s assertion that he
did not execute any patent assignments” and that the
agreement conclusively established that Mr. Halpern had
no inventorship rights in the stent compressing device or
the cartridge device that he claims to have invented. In
the district court and again on appeal, however, Mr.
Halpern has alleged that the employment agreement was
never fully executed and that he did not effectively assign
his inventorship rights to PeriTec. For example, the
complaint stated (1) that the contract “included specific
conditions precedent to its enforcement”; (2) that one
condition precedent was the execution of several docu-
ments, including an equity agreement, “prior to or on [Mr.
Halpern’s] Start Date”; (3) that Mr. Halpern did not
receive the equity agreement “until months later”; and (4)
that Mr. Halpern “did not execute the [e]quity
[a]greement.” Mr. Halpern also alleged that he “refused
to execute” a patent assignment in November 2006, and
that the inventions “were clearly outside the job descrip-
tion in the [employment] agreement.” Based on those
factual allegations challenging the validity of the pur-
ported assignment, we hold that the question whether
9 HALPERN v. PERITEC BIOSCIENCES
Mr. Halpern has surrendered any rights in the pending
patent applications presents a factual question, the
resolution of which goes beyond what the court was
authorized to do based on the pleadings alone. See
Tatum, 58 F.3d at 1109. Because the district court did
not accept all of the factual allegations in the complaint
as true, we cannot sustain its Rule 12(b)(6) dismissal on
that basis. Instead, the district court’s Rule 12(b)(6)
dismissal properly rests not on the factual issue of as-
signment, but on the legal ground that there is no “pri-
vate right of action to challenge inventorship of a pending
patent application.” HIF Bio, 600 F.3d at 1354.
3. To the extent that Mr. Halpern seeks injunctive re-
lief independent of his inventorship claim, he still fails to
state a claim upon which relief could be granted. While
Mr. Halpern stated before the district court that “[f]ederal
law creates a cause of action for an injunction during the
pendency of a patent application,” there is no legal basis
for that assertion. To the contrary, an injunction is an
equitable remedy for a violation of a right, and any in-
junction therefore must be predicated on a viable cause of
action. See eBay Inc. v. MercExchange, L.L.C., 547 U.S.
388, 392 (2006). In his complaint, Mr. Halpern does not
allege any violation of a right that could give rise to a
right to injunctive relief, whether pertaining to inventor-
ship or otherwise. Therefore, we affirm the district
court’s dismissal of Mr. Halpern’s Patent Rights claim
under Rule 12(b)(6), but we do so without deciding
whether or not Mr. Halpern assigned his alleged rights in
the patent applications to PeriTec.
Each party shall bear its own costs for this appeal.
AFFIRMED