DCT
7:14-cv-00227
Kamdem Ouaffo v. PepsiCo Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ricky Kamdem-Ouaffo, PhD (New Jersey)
- Defendant: PepsiCo Inc. and its Affiliates (New York); Dr. Peter S. Given Jr. (Connecticut); Dr. Naijie Zhang (Connecticut); Scentsational Technologies LLC (Pennsylvania); Steven M. Landau (Pennsylvania); John Doe and/or Jane Doe
- Plaintiff’s Counsel: Pro Se
- Case Identification: 7:14-cv-00227, S.D.N.Y., 03/25/2015
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant PepsiCo Inc. is registered to do business in New York and maintains a Research and Development facility in Valhalla, New York, where the events giving rise to the complaint allegedly occurred.
- Core Dispute: Plaintiff, a former contractor for PepsiCo, alleges that he is the true inventor of technology patented by PepsiCo and seeks correction of inventorship, alongside claims of fraud, unjust enrichment, and breach of contract related to the procurement of the patent.
- Technical Context: The technology involves methods for embedding aroma compounds into packaging materials, allowing a consumer to experience a product's scent upon first opening the container.
- Key Procedural History: The complaint references a parallel lawsuit filed by Defendant Scentsational Technologies LLC against PepsiCo, also alleging misappropriation and incorrect inventorship for the same patent-in-suit. Plaintiff also references prior depositions from a New York state court action where PepsiCo's named inventors allegedly acknowledged Plaintiff's instrumental role in developing the technology.
Case Timeline
| Date | Event |
|---|---|
| 2008-07-09 | Plaintiff signs "Attachment B" employment agreement with PepsiCo |
| 2008-07-14 | Plaintiff commences work at PepsiCo |
| 2009-09-16 | PepsiCo manager allegedly discusses terminating Plaintiff's contract and its potential impact on "decision on inventorship" |
| 2009-09-28 | Plaintiff's contract with PepsiCo is terminated |
| 2009-12-18 | Defendants allegedly send defamatory communication to the U.S. government regarding Plaintiff |
| 2010-06-21 | Named inventors sign "Joint Inventor's Oath or Declaration" for the patent application |
| 2010-07-07 | '637 Patent Priority Date (Application Filing Date) |
| 2012-01-12 | U.S. Patent Application Publication No. 2012/0006909 A1 is published |
| 2012-10-11 | Plaintiff requests correction of inventorship from PepsiCo |
| 2013-07-02 | U.S. Patent No. 8,474,637 B2 Issues |
| 2013-12-05 | Scentsational Technologies LLC files lawsuit against PepsiCo over the '637 Patent |
| 2015-03-25 | Complaint Filing Date (Second Amended Complaint) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,474,637 - "Releasable Entrapment of Aroma Using a Polymeric Matrix"
- Patent Identification: U.S. Patent No. 8,474,637, "Releasable Entrapment of Aroma Using a Polymeric Matrix," issued July 2, 2013 (’637 Patent).
The Invention Explained
- Problem Addressed: The patent's background describes the challenge of allowing consumers to experience a product's aroma (e.g., a beverage) at the point of sale without compromising the product's integrity by opening it ('637 Patent, col. 1:11-38). Existing solutions like "scratch and sniff" strips were seen as ineffective or not representative of the actual product aroma ('637 Patent, col. 2:14-29).
- The Patented Solution: The invention is an aroma delivery system integrated into a product's packaging, typically between the container and its closure (e.g., a screw-cap) ('637 Patent, col. 3:11-24). An aroma compound is entrapped within a protective polymeric matrix applied to the container neck. When the consumer first opens the container, the mechanical action of removing the closure abrades or breaches the matrix, releasing a burst of the intended aroma ('637 Patent, col. 7:52-8:6; Fig. 1C). This provides an authentic scent experience tied to the act of opening the product for the first time.
- Technical Importance: This approach aimed to create a more integrated and authentic sensory marketing experience than external stickers, directly linking the aroma release to the consumer's interaction with the primary packaging.
Key Claims at a Glance
- The complaint focuses on the inventorship of the subject matter of the patent generally, with specific reference to "the primary Claim # 1" (Compl. ¶84-85).
- Independent Claim 1:
- A container having an openable closure and an aroma delivery system positioned between the closure and container.
- The system comprises an aroma compound entrapped within a polymeric matrix.
- It also comprises a non-replaceable secondary covering film impermeable to the aroma compound, where the film is in contact with the polymeric matrix.
- The aroma compound is released upon initial abrasion of the secondary covering film.
- The complaint does not explicitly reserve the right to assert dependent claims, as its primary cause of action is correction of inventorship, not infringement.
III. The Accused Instrumentality
Product Identification
- The dispute does not concern an infringing commercial product. Instead, the central "instrumentality" is the ’637 Patent itself and the act of obtaining it from the USPTO (Compl. ¶13, ¶18).
Functionality and Market Context
- Plaintiff alleges that the technology claimed in the ’637 Patent was the direct result of his work as a contractor at PepsiCo between 2008 and 2009 (Compl. ¶28, ¶93). The complaint asserts that this technology was of "significant commercial value in food and beverage applications" (Compl. ¶28). The complaint further notes that another company, Scentsational Technologies, alleges the technology has a high market value, citing a project with Coca-Cola estimated to generate millions in annual profit, which Plaintiff suggests is an indicator of the value of his alleged intellectual property (Compl. ¶105-106).
IV. Analysis of Infringement Allegations
The complaint does not allege patent infringement. The central dispute is over inventorship. The Plaintiff alleges that he, not the named inventors, conceived of and developed the technology claimed in the ’637 Patent. The following table summarizes the Plaintiff's asserted inventive contributions corresponding to the elements of Claim 1.
'637 Patent Inventorship Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Alleged Inventive Contribution | Complaint Citation | Patent Citation |
|---|---|---|---|
| A container having an openable closure and an aroma delivery system positioned between the closure and container | Plaintiff alleges he "pioneered, conceptualized, designed, demonstrated, proved, executed, and implemented aroma concepts, technologies, and techniques" for food and beverage applications at PepsiCo. | ¶28 | col. 7:46-54 |
| wherein the aroma delivery system comprises: an aroma compound entrapped within a polymeric matrix | Plaintiff claims to have "single-handedly demonstrated the need for... flavor encapsulates or.... aroma delivery systems" and subsequently "designed and have built an Aroma" system. | ¶62 | col. 5:56-60 |
| and a non-replaceable secondary covering film impermeable to the aroma compound, wherein the secondary covering film is in contact with the polymeric matrix | The complaint alleges Plaintiff's work led directly to the claims of the '637 patent, which includes this specific film element. | ¶85, ¶93 | col. 7:10-14 |
| and wherein said aroma compound is released upon initial abrasion of the secondary covering film | Plaintiff claims his work and ideas resulted in the patented technology, which is based on this release mechanism. | ¶93, ¶95 | col. 8:1-6 |
- Identified Points of Contention: The case does not present typical infringement disputes. The central questions are factual and legal inquiries into inventorship and ownership.
- Conception: What evidence exists to establish who first conceived of the complete and operative invention as defined by the elements of Claim 1? The complaint references laboratory notebooks and project documents that it alleges would establish Plaintiff's inventorship (Compl. ¶85, ¶87, ¶94).
- Derivation: Did the named inventors, Dr. Zhang and Dr. Given, derive the invention from the Plaintiff? The complaint alleges that Plaintiff's work was "instrumental" and that he taught and trained the named inventors in the relevant art (Compl. ¶30, ¶209).
- Joint Inventorship: The complaint also raises the question of whether a third party, Steven M. Landau of Scentsational Technologies, has a competing claim to inventorship, creating a three-way dispute over who truly invented the claimed subject matter (Compl. ¶75, ¶99).
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
While claim construction is typically for infringement analysis, the meaning of these terms will be central to determining who conceived of the invention that they define.
The Term: "aroma delivery system positioned between the closure and container"
Context and Importance: This phrase defines the location and fundamental context of the invention. Determining who first conceived of placing such a system in this specific interactive location—as opposed to a generic scented packaging material—will be critical to the inventorship analysis. Practitioners may focus on this term to distinguish the claimed invention from prior art related to scented materials generally.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes application to various closure types, including screw-tops and flip-tops, suggesting the term is not limited to a single configuration (e.g., '637 Patent, col. 3:36-41).
- Evidence for a Narrower Interpretation: The primary embodiments shown in Figures 1 and 2 depict the system specifically on the neck of a bottle or rim of a container, directly under the cap's sealing surfaces, which may suggest a more limited scope tied to this interactive placement ('637 Patent, Fig. 1A-1C, 2A-2C).
The Term: "released upon initial abrasion"
Context and Importance: This functional language describes the specific mechanism of aroma release. The core of the inventorship dispute may turn on who conceived of this precise trigger—abrasion caused by opening—rather than other potential release mechanisms like puncture, chemical reaction, or passive diffusion.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses varied language like "breached or broken," "torn, broken, or abraded," and "scrapes, breaches, or breaks the film," which could support a construction that includes more than just rubbing-style abrasion ('637 Patent, col. 3:28-30, col. 7:50-51).
- Evidence for a Narrower Interpretation: Claim 1 explicitly uses the word "abrasion." Further, the detailed description repeatedly links the release to the rubbing action between the closure and the neck of the container, as when threads of a cap rub against the system ('637 Patent, col. 8:1-6).
VI. Other Allegations
- Allegations of Fraudulent Conduct and Willful Misconduct: The complaint alleges that Defendants' procurement of the '637 patent involved fraudulent and willful acts. It claims Defendants knew Plaintiff was the true inventor but intentionally "expunged Plaintiff's name" from the invention disclosures (Compl. ¶32, ¶219). The complaint further alleges that the named inventors, Drs. Zhang and Given, signed a false "Inventor's Oath or Declaration" with the USPTO, knowing that Plaintiff was the true inventor, in violation of U.S. criminal law (Compl. ¶44-47, ¶250). These allegations form the basis for the First Cause of Action, which seeks to void the underlying intellectual property agreement between Plaintiff and PepsiCo (Compl. ¶153).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof of conception: What contemporaneous documentation, such as the laboratory notebooks and communications referenced in the complaint, will be produced to establish who first conceived of the specific combination of elements recited in Claim 1 of the '637 patent?
- A second key question involves competing claims of inventorship: How will the court resolve the three-sided dispute over the technology's origin, weighing the claims of the Plaintiff (Dr. Kamdem-Ouaffo), the patent's named inventors (Drs. Given and Zhang), and the third-party challenger (Scentsational Technologies/Mr. Landau)?
- Finally, the case will likely turn on a question of contractual validity and alleged fraud: Did the "Attachment B" agreement validly assign Plaintiff's inventive rights to PepsiCo, or, as Plaintiff alleges, was the agreement itself invalid or rendered unenforceable by Defendants' subsequent alleged fraudulent conduct in procuring the patent with incorrect inventors?