Certified Question From the United States Court of Appeals for the Federal Circuit The Honorable William C. Bryson, Circuit Judge
The opinion of the court was delivered by: Kite, Chief Justice.
Before KITE, C.J., and GOLDEN, HILL, VOIGT, and BURKE, JJ.
NOTICE: This opinion is subject to formal revision before publication in Pacific Reporter Third. Readers are requested to notify the Clerk of the Supreme Court, Supreme Court Building, Cheyenne, Wyoming 82002, of typographical or other formal errors so correction may be made before final publication in the permanent volume.
[¶1] The United States Court of Appeals for the Federal Circuit certified a question to us regarding the validity of an assignment of intellectual property rights given by Yale Preston to Marathon Oil Company without any additional consideration other than continued at-will employment.
[¶2] The certified question is:
Does continuing the employment of an existing at-will employee constitute adequate consideration to support an agreement containing an intellectual property-assignment provision?
Our answer to the question is "yes," continuation of at-will employment is sufficient consideration for an agreement requiring assignment of intellectual property.
[¶3] The certification order contains the following statement of facts relevant to the question certified:
(b) A statement of all facts relevant to the questions certified
While we do not believe that resolution of this question requires application of the facts of this particular case, below are selected underlying facts to provide context. In a letter dated February 22, 2001, Pennaco Energy, Inc. ("Pennaco"), a wholly-owned subsidiary of Marathon (collectively, Pennaco and Marathon are referred to as "Marathon"), offered employment to Preston as a relief pumper in Marathon's coal bed methane well operation in the Powder River Basin in northeastern Wyoming. In addition to describing Preston's proposed responsibilities, compensation, and benefits, the letter indicated that Preston was being hired "under the policy of 'employment at will' whereby you or the Company is free to terminate the employment relationship at any time and for any reason without cause or liability other than as prescribed by law." Preston countersigned the letter on February 27, 2001.
Thereafter, Preston started work for Marathon, although there is a factual dispute as to the precise date. After a bench trial, the district court in this case made a factual finding that Preston began employment with Marathon on March 30, 2001. Preston contends that he began work on March 1, 2001.*fn1
On April 5, 2001, Preston signed a document entitled Marathon Oil Company and Subsidiaries Employee Agreement ("the April 2001 Employee Agreement"). Brenda Williams signed on behalf of Marathon on the same date. The agreement contained the following provisions relevant to this dispute:
(d) "Intellectual Property" means all inventions, discoveries, developments, writings, computer programs and related documentation, designs, ideas, and any other work product made or conceived by EMPLOYEE during the term of employment with MARATHON which
(1) relate to the present or reasonably anticipated business of the MARATHON GROUP, or (2) were made or created with the use of Confidential Information or any equipment, supplies, or facilities of the MARATHON GROUP. Such property made or conceived by EMPLOYEE (or for which EMPLOYEE files a patent or copyright application) within one year after termination of ...