Halpern v. Peritec Biosciences, Ltd. et al

Filing 8

Order denying Defendants' Motion for reconsideration (Related Doc # 7 ). See order for details. Judge John R. Adams on 11/21/11.(L, J)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION

DAVID HALPERN,
Plaintiff,
v.
PERITEC BIOSCIENCES, LTD., et al.,

Defendants.

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CASE NO.: 1:11CV2055
JUDGE JOHN ADAMS
ORDER

This matter comes before the Court on Defendants’ motion to reconsider and
vacate the Court’s order of remand. The motion is DENIED.
Initially, the Court rejects any notion that Defendants were entitled to 30 days to
oppose the motion to remand. In support of this contention, Defendants rely upon Vogel
v. U.S. Office Products Co., 258 F.3d 509 (6th Cir. 2001) for the proposition that a
motion to remand is a dispositive motion. Defendants are correct that this is the holding
in Vogel. However, the Court in Vogel was asked to determine whether a motion was
dispositive in the context of 28 U.S.C. § 636(b)(1)(A), i.e., to determine whether a
magistrate judge could properly resolve such a motion.

“In determining whether a

particular motion is dispositive, this court undertakes functional analysis of the motion’s
potential effect on litigation.”

Vogel, 258 F.3d at 514-15.

This analysis has no

application to the Court’s local rules. For the purposes of a briefing schedule, there is no
need to undertake any analysis. This Court, however, need not formally determine the

proper response period. Instead, the Court has fully considered the proposed opposition
filed by Defendants. Defendants’ opposition does not support reconsideration.
If anything. Defendants’ opposition makes clear that remand is appropriate in this
matter. First, Defendants admit as follows: “On February 11, 2011, when Plaintiff filed
[this complaint], Plaintiff raised the issue of inventorship[.]” Doc. 7 at 8. Defendants
also note that “Plaintiff raised the issue of inventorship in claims nearly factually
identical to those in his federal lawsuit in [a prior complaint].” Doc. 7 at 7. According to
Defendants, “[t]he issue of inventorship is then vigorously examined beginning on page
thirteen (13) of [the complaint], where Plaintiff titles an entire section of the
Complaint “Facts Pertinent to Inventure and Patent Claims.” Doc. 7 at 7 (emphasis
in original).
Defendants’ argument appears to be that they were precluded from removing this
action by the holding in Halpern v. PeriTec Biosciences, Ltd., 383 Fed. Appx. 943 (Fed.
Cir. 2010). Halpern, however, makes it clear that Defendants’ removal was untimely. In
fact, Defendants’ position is particular egregious given that they took the exact opposite
position in the original federal case cited above. In that matter, Defendants asserted that
this Court properly dismissed the complaint for failure to state a claim upon which relief
could be granted. In contrast, Plaintiff asserted that this Court should have dismissed the
matter for lack of jurisdiction. In resolving the matter, the Federal Circuit noted as
follows:
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. 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.

…
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 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).
Halpern, 383 Fed. Appx. at 946-947 (emphasis added).
Accordingly, Halpern makes clear that a claim for inventorship related to pending
patent applications raises a question of federal law. 1 Moreover, district courts have
jurisdiction over such complaints.

The fact that such a claim would be subject to

dismissal does not undermine the fact that this Court would have jurisdiction over such a
claim. As the state-court complaint contained this federal claim at the time of filing,
Defendants’ removal was untimely.
Defendants’ motion for reconsideration is DENIED.

The Court’s prior time

frame for briefing the issue of attorney fees remains unchanged.

IT IS SO ORDERED.

Dated: November 21, 2011

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____/s/ Judge John R. Adams_______
JUDGE JOHN R. ADAMS
UNITED STATES DISTRICT COURT

Defendants contend that “it would have been a Rule 11 violation to remove the identical case when the
Federal Circuit Court said no federal claim was present on a pending patent.” Doc. 7 at 9. However, the
Federal Circuit held that no federal claim upon which relief could be granted was present. At the same
time, that Court made it clear that federal jurisdiction had been properly invoked.