NOTE: This disposition is nonprecedential.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 Dayton, 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 defendants 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 “association” 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 entitled “Patent Rights” and was brought under the authority 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 improperly 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 provisional patent rights . . . during the pendency of proceedings 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 between PeriTec and Mr. Halpern was made contingent 

upon Mr. Halpern’s execution of certain other documents, 

which included a document entitled “Confidential Information and Invention Assignment Agreement.” Paragraph 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, material 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 absolutely 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 district 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 dismissed that claim under Rule 12(b)(1) for want of jurisdiction. 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 validly 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 application 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 validly 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 applications. Although we affirm the judgment of the district 

court, we disagree with both parties’ arguments on appeal. 

Mr. Halpern’s argument ignores the well-established 

distinction between a dismissal for lack of federal jurisdiction 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 defeated . . . 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 averment 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 involving 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 district court had jurisdiction to address the Patent Rights 

claim, we reject the defendants’ contention that the court 

properly dismissed the complaint based on the assignment 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 documents, 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 description in the [employment] agreement.” Based on those 

factual allegations challenging the validity of the purported 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 assignment, but on the legal ground that there is no “private 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 relief 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 injunction 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 inventorship 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