## Facts

- Dr. John Joseph Okuley, a molecular biologist, was employed by Washington State University (WSU) to conduct research on plant fat metabolism and gene isolation.
- Under WSU’s Faculty Manual (part of Okuley’s employment contract), faculty assigned to WSU intellectual property arising out of their employment.
- WSU entered a research collaboration agreement with E.I. Du Pont de Nemours & Company (DuPont) providing that intellectual property discovered in the collaboration would be assigned to DuPont.
- In August 1992, while still employed by WSU but working in a borrowed Ohio State University laboratory, Okuley identified the FAD2 gene and informed WSU and DuPont.
- DuPont initiated the patent process in November 1992; an inventorship dispute was resolved in May 1993 by recognizing joint inventorship.
- Okuley agreed to assign to DuPont his entire right, title, and interest in FAD2 and to execute documents needed for patent prosecution.
- Okuley later demanded a royalty as a condition of continued cooperation and stopped assisting with the patent application.
- DuPont sued for a declaration of ownership and specific enforcement of Okuley’s cooperation obligations; Okuley counterclaimed for a declaration of inventorship and rescission of his assignment.
- The district court granted summary judgment for DuPont; Okuley appealed and sought transfer to the Federal Circuit.

## Issues

1. Whether the appeal fell within the Federal Circuit’s exclusive jurisdiction because the case “arose under” federal patent law under 28 U.S.C. §§ 1338 and 1295(a)(1).
2. Whether DuPont was entitled, as a matter of contract law, to a declaration that it owned the rights associated with FAD2.
3. Whether DuPont was entitled to specific performance requiring Okuley to execute documents and cooperate in the patent prosecution process.
4. Whether Okuley was entitled to rescission of his assignment and related declaratory relief.

## Decision

- The Sixth Circuit denied transfer and exercised appellate jurisdiction because the case did not “arise under” the patent laws.
- The court affirmed summary judgment for DuPont on all claims and against Okuley on his counterclaims.
- The court held DuPont owned the FAD2-related rights under the employment and collaboration agreements and Okuley’s individual assignment.
- The court enforced Okuley’s contractual duty to cooperate in patent prosecution and rejected his attempt to condition cooperation on additional compensation.
- The court rejected rescission and related relief because the governing agreements controlled the allocation of rights and no basis to undo them defeated summary judgment.

## Legal Principles

- A case does not “arise under” federal patent law for jurisdictional purposes merely because it concerns patentable subject matter or the right to pursue a patent; contract-based ownership and assignment disputes generally do not trigger exclusive Federal Circuit appellate jurisdiction.
- Contract instruments allocating intellectual property rights (employment IP provisions, collaboration agreements, and individual assignments) are enforceable according to their terms when the discovery is made within the scope of covered employment or collaboration.
- An inventor’s agreement to assign rights and execute necessary prosecution documents may be specifically enforced when supported by clear contractual language and undisputed facts.
- Post-agreement demands for additional compensation do not modify or defeat unambiguous assignment and cooperation obligations absent a legally sufficient basis to alter or rescind the contract.
- Summary judgment is proper when no genuine dispute of material fact exists as to the operative agreements, the timing of the discovery, and the contractual duties triggered by those facts.

## Conclusion

The Sixth Circuit treated the dispute as one of contractual allocation and enforcement of intellectual property rights rather than patent-law adjudication, retained jurisdiction, and affirmed judgment declaring DuPont’s ownership of the FAD2 rights and ordering enforcement of Okuley’s cooperation obligations while rejecting his rescission-based counterclaims.


E.I. Du Pont de Nemours & Co. v. Okuley, 344 F.3d 578 (6th Cir. 2003)