Kamdem Ouaffo v. PepsiCo Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Ricky Kamdem-Ouaffo, PhD (New Jersey)
  • Defendant: PepsiCo Inc. (New York); Dr. Peter S. Given Jr. (Connecticut); Dr. Naijie Zhang (Connecticut)
  • Plaintiff’s Counsel: Pro Se
• Case Identification: 7:14-cv-00227, S.D.N.Y., 03/14/2014
• Venue Allegations: Venue is alleged based on an intellectual property agreement between the parties that granted exclusive jurisdiction to courts in the Southern District of New York, and because the work giving rise to the dispute was performed at Defendant PepsiCo's facility in Westchester County, New York.
• Core Dispute: Plaintiff, a former contractor for PepsiCo, alleges that he is the true inventor of patented technology for which PepsiCo wrongfully obtained patents by naming its own employees as inventors.
• Technical Context: The technology concerns aroma delivery systems for consumer packaging, particularly for enhancing the olfactory experience when opening a beverage container.
• Key Procedural History: The complaint makes extensive reference to a separate lawsuit filed by ScentSational Technologies LLC against PepsiCo in the same district (13-cv-8645). In that case, ScentSational alleges that a different third party is the true inventor of the same patented technology, which it claims PepsiCo misappropriated as a trade secret. This creates a complex, multi-party dispute over the inventorship of the patent-in-suit.

Case Timeline

Date	Event
2008-07-08	Plaintiff and PepsiCo sign "Staffing Supplier Employee Agreement Regarding Confidentiality And Intellectual Property."
2008-07-14	Plaintiff begins contract work at PepsiCo's Valhalla, NY facility.
2009-09-28	Plaintiff's contract with PepsiCo is terminated; Plaintiff sends letter to PepsiCo asserting authorship of aroma delivery technology.
2010-07-07	Priority Date for U.S. Patent No. 8,474,637 (Application Filing Date).
2012-01-12	U.S. Patent Application Publication No. 2012/0006909 A1 (related to the '637 Patent) is published.
2012-10-11	Plaintiff requests that PepsiCo amend and correct inventorship on the pending patent application.
2013-07-02	U.S. Patent No. 8,474,637 issues.
2013-12-05	ScentSational Technologies LLC files a lawsuit against PepsiCo concerning the '637 Patent.
2014-03-14	Amended Complaint filed by Plaintiff.

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,474,637 - Releasable Entrapment of Aroma Using a Polymeric Matrix

The Invention Explained

• Problem Addressed: The patent's background describes the difficulty in delivering an adequate and appealing aroma to consumers when they first open a product, particularly a beverage (Compl. ¶¶ 61, 106; ’637 Patent, col. 1:11-15, 1:39-46). Existing methods like "scratch and sniff" strips on the outside of packaging are often not effective or convincing, and aroma within the product's headspace can be inconsistent or degrade over time (’637 Patent, col. 2:13-28).
• The Patented Solution: The invention is an aroma delivery system applied to a container closure, such as the neck of a bottle under a screw-cap (’637 Patent, Fig. 1C). The system comprises an aroma compound entrapped within a protective polymeric matrix and covered by a secondary film (’637 Patent, Abstract). When the consumer opens the container, the mechanical friction of the cap moving against the neck abrades the film and matrix, breaking them open and releasing a fresh burst of aroma at the moment of opening (’637 Patent, col. 5:29-42; col. 8:1-6).
• Technical Importance: This approach provides a point-of-use aroma release tied directly to the consumer action of opening the product, aiming to create a more impactful and representative sensory experience than prior art packaging solutions (’637 Patent, col. 2:4-12).

Key Claims at a Glance

• The complaint focuses on the subject matter of the patent generally, with specific reference to "primary Claim # 1" (Compl. ¶74). The Plaintiff claims to be the true inventor of all the claims (Compl. ¶83).
• Independent Claim 1 of the ’637 Patent recites the essential elements:
  • A container with an openable closure.
  • An aroma delivery system positioned between the closure and the container.
  • The system comprises an aroma compound entrapped in a polymeric matrix.
  • The system also comprises a "non-replaceable secondary covering film" that is impermeable to the aroma.
  • The aroma compound is released upon "initial abrasion" of this secondary film.
• The complaint does not explicitly reserve the right to assert dependent claims, as its focus is on correcting inventorship for the entire patent.

III. The Accused Instrumentality

This lawsuit is not a conventional patent infringement action and therefore does not identify an accused infringing product or service. The dispute centers on the inventorship and ownership of the ’637 Patent itself (Compl. ¶¶ 12, 15). The Plaintiff alleges that the patented technology claimed in the ’637 Patent embodies the intellectual property that he "pioneered, conceptualized, designed, demonstrated, proved, executed, and implemented" during his contract work for Defendant PepsiCo (Compl. ¶¶ 28-30, 83). The "accused instrumentality," in this context, is the ’637 Patent, which Plaintiff alleges improperly names Defendants Given and Zhang as inventors and was wrongfully assigned to PepsiCo (Compl. ¶¶ 7, 32, 44-45, 120).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not allege patent infringement. Instead, it presents a detailed narrative for a claim of correction of inventorship under 35 U.S.C. § 256 (Tenth Cause of Action) and related claims for breach of contract, fraud, and unjust enrichment (Compl. ¶¶ 116-178).

The Plaintiff’s central allegation is that he conceived of and reduced to practice the claimed invention of the ’637 Patent between July 2008 and October 2009 while working as a contractor at PepsiCo’s research facility (Compl. ¶¶ 13, 28-30, 98). The complaint alleges that after his contract was terminated, PepsiCo filed a patent application for his invention but deliberately and fraudulently omitted his name, instead naming its employees, Defendants Dr. Given and Dr. Zhang, as the inventors (Compl. ¶¶ 32, 34-35). Plaintiff alleges Dr. Zhang was not even employed by PepsiCo when the invention was created and that neither named inventor contributed to the conception of the invention (Compl. ¶¶ 32-33). The complaint further alleges that the named inventors and other PepsiCo agents knowingly filed false inventor declarations with the U.S. Patent and Trademark Office to secure the patent (Compl. ¶¶ 44-47, 124, 129).

V. Key Claim Terms for Construction

In an inventorship dispute, the focus is less on claim construction for infringement and more on defining the boundaries of the "conception" of the invention. The interpretation of key terms will be central to determining whether the Plaintiff’s alleged contribution meets the legal standard for inventorship of the claimed subject matter.

• The Term: "polymeric matrix"

  • Context and Importance: The specific composition and properties of the "polymeric matrix" are foundational to the invention. The core of the inventorship dispute will likely involve evidence (such as lab notebooks) showing who first conceived of using a specific type of matrix (e.g., shellac, polyvinyl acetate) to entrap aroma compounds in a way that allows for mechanical release upon abrasion (Compl. ¶¶ 77, 84; ’637 Patent, col. 5:60-67). Practitioners may focus on this term to establish the precise technical details of the conception.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification lists a wide variety of suitable polymers, including natural waxes, biopolymers like shellac and zein protein, and numerous synthetic polymers such as polyvinyl acetate and polyacrylates (’637 Patent, col. 6:1-6). This broad disclosure could support an argument that conception did not require a single, specific polymer but rather the general idea of using such a matrix.
    • Evidence for a Narrower Interpretation: The detailed examples focus on specific formulations, such as a solution of plasticized shellac in ethanol or an aqueous dispersion of polyvinyl acetate (’637 Patent, col. 6:38-51, 6:52-57). Arguments for inventorship may center on who first identified and tested these specific, operative embodiments.

• The Term: "released upon initial abrasion"

  • Context and Importance: This phrase defines the novel release mechanism, which distinguishes the invention from passive aroma release systems. The dispute will turn on who first conceived of the complete idea of using the physical act of opening the container—the friction between the cap and the neck—to trigger the aroma release.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language is functional, describing the result ("released upon") rather than a specific structure. This may support a conception argument based on a high-level idea of friction-based release, even without specifying the exact forces or components involved.
    • Evidence for a Narrower Interpretation: The specification and figures explicitly link the "abrasion" to the interaction between threads on a cap and threads on a container neck (e.g., "threads 111...rub against neck 101") (’637 Patent, col. 8:1-6; Figs. 1A-1C). A court may determine that conception required conceiving this specific mechanical interaction, not just a general concept of abrasion.

VI. Other Allegations

• Willful Infringement: The complaint does not allege willful infringement. Instead, it alleges willful misconduct in procuring the patent. It claims that Defendants knowingly and willfully filed fraudulent "Inventor's Oath or Declaration" forms with the USPTO, falsely stating that Defendants Given and Zhang were the original inventors (Compl. ¶¶ 124, 129, 131). These allegations form the basis for causes of action including violation of 35 U.S.C. § 115 and making false statements to a government agency (Second and Third Causes of Action).

VII. Analyst’s Conclusion: Key Questions for the Case

• A primary issue will be the factual determination of inventorship: can the Plaintiff produce sufficient corroborated evidence to prove, by the legally required standard of clear and convincing evidence, that he conceived of the complete and operative invention as defined by the claims of the ’637 patent before the named inventors? The outcome will likely depend on documentary evidence such as the laboratory notebooks and communications the complaint alleges are in PepsiCo's possession.

• A second core issue involves competing claims of originality: how will the court address the parallel claims of inventorship from two different external parties (the Plaintiff in this case, and ScentSational Technologies on behalf of a third party in a separate case)? This raises the complex question of which party, if any, can establish priority of invention for the technology embodied in the ’637 patent.

• A final question will be the enforceability of the underlying contract: does the Plaintiff's allegation that PepsiCo failed to render full payment for his work and intellectual property create a valid challenge to the assignment of his invention rights, potentially affecting ownership of the patent even if inventorship is corrected?