Court Bounces Mizzou Patent Suit Against Professor

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Galen Suppes is a chemical engineering professor at the University of Missouri and co-founder and Chief Scientific Officer of Renewable Alternatives, LLC (Renewable Alternatives). 

Suppes and former Mizzou grad student and post doc William Sutterlin founded Renewable Alternatives in 2003 to develop inventions relating to fuel cell technology, eco-friendly antifreeze and non-toxic diesel fuel additives.  According to Suppes, the university failed to recognize and pursue commercial prospoects for his research.

In January, the university sued Suppes, Sutterlin, Renewable Alternatives and another company called Homeland Technologies, LLC (alleged to be solely owned by Suppes) in federal court in Jefferson City, Missouri over ownership of certain technology developed by the defendants. 

The complaint (missouri_complaint.pdf) sought a declaratory judgment that the University of Missouri is the legal owner of inventions, patents and patent applications conceived and reduced to practice by Suppes and Sutterlin while they were employed by the university.  The complaint also alleged that Suppes and Sutterlin breached their employment agreements and asked the court to automatically assign the invention rights to the university.

The complaint listed U.S. Patent No. 6,574,971 (‘971 patent) and requested that the court require the defendants to provide a listing of all other inventions, patents and applications they worked on during their employment with the university.

The ‘971 patent is entitled “Fatty-acid thermal storage devices, cycle and chemicals” and relates to methods for producing fatty acid derivatives for use as phase change materials (PCM).  According to the ‘971 patent, the simple process disclosed provides high conversions of feedstocks to useful PCM chemicals, which can be used to eliminate the need for air conditioning and shift load to non-peak demand times.

Last month, Judge Scott O. Wright granted Suppes’ and Homeland Technologies’ motion to dismiss the suit for lack of subject matter jurisdiction because the complaint failed to allege any violations of the federal Patent Act (missouri_order.pdf). 

Federal courts have jurisdiction over patent disputes only to the extent that federal patent law creates the cause of action or the requested relief necessarily depends on resolution of a “substantial question” of federal patent law.  Suppes had argued that neither applied here because the case was simply a contract dispute. 

The court agreed:

None of the relief sought by plaintiff is relief provided by the Patent Act.  The relief sought by plaintiff is based upon alleged violations of the plaintiff University’s rights under the University’s Collected Rules and plaintiff’s employment agreement with defendant Suppes.

Accordingly, the case was dismissed due to lack of subject matter jurisdiction, and the university will have to re-file in state court if it wants its claims adjudicated.

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Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.