Kamdem-Ouaffo v. Pepsico Inc.
657 F. App'x 949
Fed. Cir.2016Background
- Dr. Ricky Kamdem-Ouaffo worked as a food scientist assigned to PepsiCo through staffing supplier Subex from July 2008 to September 2009 and was paid $82,142.
- Before starting, he signed Attachment B (a Staffing Supplier Employee Agreement) assigning to PepsiCo all intellectual property he created during the assignment.
- After his assignment ended, PepsiCo filed several patent applications; one issued as U.S. Patent No. 8,474,637 listing two PepsiCo employees as inventors. Kamdem‑Ouaffo requested correction of inventorship; PepsiCo did not amend.
- Kamdem‑Ouaffo sued asserting (in his Second Amended Complaint) that the Agreement was unenforceable, and raised claims for unjust enrichment, constructive trust, correction of inventorship under 35 U.S.C. § 256, and defamation.
- The district court dismissed the Second Amended Complaint with prejudice; Kamdem‑Ouaffo appealed. The Second Circuit affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Enforceability of Attachment B / contract defenses | Attachment B is unenforceable for lack of mutual assent, ambiguity, fraud, and breach of implied covenant | Attachment B is binding; plaintiff signed it, received consideration, and cannot avoid terms by failing to read; only parties to contract can breach implied covenant | Affirmed dismissal: plaintiff’s allegations were conclusory and insufficient to overcome the contract’s enforceability |
| Unjust enrichment & constructive trust | PepsiCo was unjustly enriched by claiming/patenting plaintiff’s inventions and not reimbursing expenses | Attachment B assigned rights to PepsiCo; no basis for equitable relief where contract governs and plaintiff failed to plead elements | Affirmed dismissal: plaintiff failed to plead the elements of unjust enrichment; constructive trust depends on unjust enrichment |
| Correction of inventorship under 35 U.S.C. § 256 | Plaintiff seeks to be named inventor on issued and pending patents; alleges reputational and ownership injury | PepsiCo contends plaintiff assigned his rights and lacks standing; also § 116 does not provide a private right for pending applications | Affirmed dismissal: no relief for pending applications; for the issued patent plaintiff lacked concrete, particularized harm (no economic ties to reputational injury) and thus lacked Article III standing |
| Defamation (statute of limitations) | Alleged defamatory statements made to U.S. government documents | Plaintiff argues statements were actionable | Affirmed dismissal: claim is time‑barred under New York’s one‑year statute and single publication rule |
Key Cases Cited
- Rothstein v. UBS AG, 708 F.3d 82 (2d Cir.) (standard: de novo review of Rule 12(b)(6) dismissal)
- Loreley Fin. (Jersey) No. 3 Ltd. v. Wells Fargo Sec., LLC, 797 F.3d 160 (2d Cir.) (standards for denying leave to amend where defects would not be cured)
- HIF Bio, Inc. v. Yung Shin Pharm. Indus. Co., 600 F.3d 1347 (Fed. Cir.) (no private right to challenge inventorship of pending applications under § 116; § 256 applies to issued patents)
- Shukh v. Seagate Tech., LLC, 803 F.3d 659 (Fed. Cir.) (concrete reputational injury with economic consequences can confer Article III standing for § 256 claim)
- Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567 (Fed. Cir.) (discussing standing to pursue infringement after assignment of patent rights)
- Georgia Malone & Co. v. Rieder, 973 N.E.2d 743 (N.Y.) (elements of unjust enrichment under New York law)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (U.S.) (injury must be concrete and particularized for Article III standing)
- Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (U.S.) (pleading stage requires clear allegation of facts demonstrating standing)