       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

                 GALEN J. SUPPES,
                  Plaintiff-Appellant

                           v.

KATTESH V. KATTI, CHRISTOPHER M. FENDER,

                 Defendants-Appellees
                ______________________

                      2017-1142
                ______________________

   Appeal from the United States District Court for the
Western District of Missouri in No. 2:16-cv-04235-MDH,
Judge M. Douglas Harpool.
                ______________________

               Decided: October 3, 2017
               ______________________

   GALEN J. SUPPES, Columbia, MO, pro se.

   HEIDI DOERHOFF VOLLET, Cook, Vetter, Doerhoff &
Landwehr, P.C., Jefferson City, MO, for defendants-
appellees.
               ______________________

   Before NEWMAN, WALLACH, and CHEN, Circuit Judges.
2                                           SUPPES   v. KATTI



PER CURIAM.
    Galen J. Suppes, proceeding pro se, appeals from the
final judgment of the United States District Court for the
Western District of Missouri (district court) dismissing his
complaint for lack of jurisdiction. We have liberally
construed Mr. Suppes’s arguments on appeal. We con-
clude, as did the district court, that the Constitution and
the Patent Act do not preclude or preempt the types of
contract Mr. Suppes entered into with his former employ-
er. We thus affirm the district court’s dismissal of his
complaint.
                       BACKGROUND
     Mr. Suppes was formerly employed as a professor of
chemical engineering at the University of Missouri (Uni-
versity). When hired, Mr. Suppes entered into an em-
ployment agreement with the University which specified
that his employment was subject to the rules, orders, and
regulations of the University. These rules, orders, and
regulations 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.” University of Missouri Collected Rules
and Regulations § 100.D.1.a.       “Invention” is defined
within these regulations as including both the
“[c]onception of the idea” and “[r]eduction to practice of
the inventive concept.” Id. § 100.C.7.
    Over the course of his employment, Mr. Suppes be-
came aggrieved when the University declined to file
patent applications for certain of his ideas, yet simultane-
ously prohibited him from filing his own patent applica-
tions and, in cases where he did file his own applications,
required him to assign those applications to the Universi-
SUPPES   v. KATTI                                         3



ty. 1 Mr. Suppes thus filed a complaint for declaratory
judgment against certain University employees in the
district court alleging violations of his constitutional
rights. Specifically, Mr. Suppes asserted the following
counts: (1) declaratory judgment of violation of his Tenth
Amendment rights in that the University exercised power
reserved by the Constitution to the States or the people;
(2) declaratory judgment of violation of Article I of the
Constitution and his Fourteenth Amendment rights in
that the University “stifled the progress of science by
selectively enforcing punitive action against the Plaintiff”
and violated “Congress-specified quid pro quo require-
ments of Patent Law”; (3) declaratory judgment of viola-
tion of his Fifth Amendment rights in that the University
demanded assignment of inventions created by Mr.
Suppes and patent applications filed by Mr. Suppes
without just compensation; (4) unilateral removal of
several ongoing Missouri state law cases to the district
court; and (5) declaratory judgment of damages up to $7.5
million.
    The district court dismissed Mr. Suppes’s complaint
with prejudice for lack of subject matter jurisdiction. See
Suppes v. Katti, No. 2:16-CV-04235-MDH, 2016 WL
6090971, *1 (W.D. Mo. Oct. 18, 2016). In its analysis, the
district court liberally construed all of Mr. Suppes’s
allegations as being brought under 42 U.S.C. § 1983 in
order to give his complaint effect. 2 Although Mr. Suppes



   1    In response to Mr. Suppes’s unilateral filing of pa-
tent applications without the knowledge or consent of the
University, the University filed suit against Mr. Suppes
in the state courts of Missouri alleging, inter alia, breach
of contract. That litigation is not at issue here.
     2  Section 1983 creates a private right of action
when a “deprivation of any rights, privileges, or immuni-
4                                           SUPPES   v. KATTI



framed his complaint as arising under federal and consti-
tutional law, the district court concluded that the parties’
true dispute is one of state contract law.
    As to Count I, the district court cited New York v.
United States, 505 U.S. 144, 156–57 (1992), for the princi-
ple that the Tenth Amendment acts solely as a restraint
on the power of Congress, and thus is inapplicable to the
University, an instrumentality of the State of Missouri.
See Suppes, 2016 WL 6090971, *3.
    As to Count II, the district court interpreted Mr.
Suppes’s argument to be that the University had, in some
manner, violated Article I, Section 8, clause 8 of the
Constitution, which states that that Congress shall have
power “[t]o promote the Progress of Science and useful
Arts, by securing for limited Times to Authors and Inven-
tors the exclusive Right to their respective Writings and
Discoveries.” See Suppes, 2016 WL 6090971, *3. The
district court observed that Mr. Suppes argued 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 the Constitution
from a demand for assignment by the University. The
court found this question to be resolved by our opinion in
Regents of University of New Mexico v. Knight, 321 F.3d
1111 (Fed. Cir. 2003). In that case, a professor at the


ties secured by the Constitution and laws” occurs “under
color” of state law. 42 U.S.C. § 1983. The “essential
elements to a § 1983 action” are “(1) whether the conduct
complained of was committed by a person acting under
color of state law; and (2) whether this conduct deprived a
person of rights, privileges, or immunities secured by the
Constitution or laws of the United States.” Parratt v.
Taylor, 451 U.S. 527, 535 (1981) overruled on other
grounds by Daniels v. Williams, 474 U.S. 327 (1986).
SUPPES   v. KATTI                                        5



University of New Mexico argued that the Constitution
and the Patent Act—in particular, 35 U.S.C. § 261—
preempted any private contract for assignment of rights
to an invention by vesting patent rights in the inventor.
New Mexico, 321 F.3d at 1118. We rejected that argu-
ment, holding that Section 261’s explicit contemplation of
assignment by the inventor allowed for such contracts.
Id. at 1119. Thus, the district court here rejected as
meritless Mr. Suppes’s contention that the Constitution
bars an inventor from contractually assigning his rights
to an invention to another.      See Suppes, 2016 WL
6090971, *3.
    As to Count III, the district court held, based on the
same authority, that because contracts that require
assignment of patent rights are not presumptively invalid
due to the Constitution or federal law, the requirement of
assignment to the University was not a taking without
just compensation. See Suppes, 2016 WL 6090971, *3.
    As to Counts IV and V, the district court held that
seizing jurisdiction of a state law case or entertaining a
naked claim for damages without a supporting federal
cause of action were both beyond its power. See Suppes,
2016 WL 6090971, *4.
    Mr. Suppes now appeals dismissal of his Section 1983
counts, arguing that the district court did not adequately
consider “Case Law” pertaining to his “Inventive
Thought,” which he characterizes as a different topic than
patent law per se. He argues that Article I, Section 8,
clause 8 “is both a grant of power and a limitation,” and
thus sets limits on both “ownership of ‘inventions’ without
time limits” and “constructs of the mind (aka unpatented
inventions) that have not met legal standards to qualify
as personal property that may be owned or assigned.”
Appellant Suppl. Br. 2. Mr. Suppes further argues that
the University’s policies violate the Constitution because
they do not “promote the Progress of Science” in that they
6                                           SUPPES   v. KATTI



prevent him from innovating by denying his ability to
receive patents on his inventions. U.S. Const. art. I, § 8,
cl. 8.
                        ANALYSIS
                A. Appellate Jurisdiction
     As a threshold matter, we have jurisdiction over this
appeal only if it “arises under” patent law. 28 U.S.C.
§ 1295(a)(1). An action “arises under” patent law when it
presents an issue of federal patent law which is
“(1) necessarily     raised,     (2) actually    disputed,
(3) substantial, and (4) capable of resolution in federal
court without disrupting the federal-state balance ap-
proved by Congress.” Gunn v. Minton, 568 U.S. 251, 258–
59 (2013). Mr. Suppes’s appeal raises the issue of wheth-
er 35 U.S.C. § 261 preempts assignment contracts which
allow for the assignment of inventions prior to any effort
to seek a patent on those inventions. This issue is actual-
ly disputed, substantial to the resolution of Mr. Suppes’s
appeal, and is capable of narrow resolution without the
disruption of Mr. Suppes’s state law claims and suits. We
thus conclude that we, and not one of our sister circuits,
have jurisdiction over Mr. Suppes’s appeal.
             B. Subject Matter Jurisdiction
    We review a district court’s dismissal for lack of sub-
ject matter jurisdiction de novo and any underlying
factual findings for clear error. Asia Vital Components
Co. v. Asetek Danmark A/S, 837 F.3d 1249, 1252 (Fed.
Cir. 2016).
     Mr. Suppes appears to make three main arguments:
(1) that the Constitution, either alone or in conjunction
with federal patent law, reserves the rights of inventions
for which patents are not yet sought to the inventors;
(2) that the Constitution’s grant of authority to create
patents “for a limited time” serves as a limit on the
amount of time for which the University can maintain
SUPPES   v. KATTI                                          7



rights to his inventions; and (3) that a contract which
allows an assignee of inventions to decline to patent those
inventions violates the Constitution by failing to “promote
the Progress of Science.” U.S. Const. art. I, § 8, cl. 8.
     As to Mr. Suppes’s first constitutional argument, the
Constitution, standing alone, grants the power to Con-
gress to “secur[e] for limited times to . . . inventors the
exclusive right to their . . . discoveries.” Id. Any rights
Mr. Suppes has in his inventions are thus subject to
Congress’s implementation of the Constitution by statute.
35 U.S.C. § 261 provides that “[a]pplications for patent,
patents, or any interest therein, shall be assignable in law
by an instrument in writing.” We have previously held in
New Mexico that 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. 321 F.3d at 1118–19 (noting that Section 261
explicitly provides for the assignment of patent interests).
It is similarly the case that a contract assigning an inter-
est in a patent not yet filed is not preempted by Section
261, because such a contract would be endorsed by Sec-
tion 261 once the patent application is filed, and Section
261 otherwise says nothing about the matter. The alloca-
tion of interests prior to the filing of a patent application
is thus a matter of state contract law and is not preempt-
ed by the Patent Act.
    As to Mr. Suppes’s second constitutional argument,
the Constitution’s limitation of patent rights to “a limited
time” refers to the allocation of rights vis-à-vis the inven-
tor and the public. That is, inventors are awarded a
limited monopoly through a patent grant to incentivize
their creative effort, but after that limited time expires,
the invention becomes available to the public. This prin-
ciple has nothing whatsoever to do with the allocation of
rights between inventors and patent assignees. As above,
that allocation is purely a matter of state contract law.
8                                             SUPPES   v. KATTI



     As to Mr. Suppes’s third constitutional argument, the
Constitution provides that “Congress shall have power . . .
[t]o promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and Discover-
ies.” U.S. Const. art. I, § 8, cl. 8 (emphasis added). The
determination of whether a statute prohibiting the as-
signment of “inventive thoughts” would promote the
Progress of Science is therefore, at least initially, allocat-
ed to Congress by the Constitution. To the extent that
Mr. Suppes is arguing that the contract is void as a mat-
ter of public policy, that is once again a matter of state
contract law.
                        CONCLUSION
    For the foregoing reasons, we determine that there is
no federal question jurisdiction pursuant to the Constitu-
tion or the Patent Act. We thus affirm the opinion of the
district court.
                        AFFIRMED
                           COSTS
    No costs.
