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Revised January 26, 1999
UNITED STATES COURT OF APPEALS
For the Fifth Circuit
__________________________________________
No. 98-50572
Summary Calendar
_________________________________________
JAMES E. WRIGHT

Plaintiff-Counter Defendant-Appellant,
VERSUS
UNITED STATES OF AMERICA, and its Agency,
the Department of Agriculture;
WILLARD J. PHELPS, Technology Transfer Officer
of the United States Department of
Agriculture; SECRETARY UNITED STATES DEPARTMENT
OF AGRICULTURE; DANIEL GLICKMAN, Secretary
United States Department of Agriculture
Defendant-Appellees,
and
TROY BIOSCIENCES, INCORPORATED
Intervenor Defendant-Counter Plaintiff-Appellee.
__________________________________________
Appeal from the United States District Court
for the Western District of Texas
__________________________________________
January 19, 1999
Before REYNALDO G. GARZA, JOLLY, and, WIENER Circuit Judges.
PER CURIAM:
I. FACTUAL AND PROCEDURAL BACKGROUND
Dr. James Wright ("Wright"), while working for United States
Department of Agriculture ("USDA"), isolated a specific strain of

BB fungus that was effective against boll weevils and other crop
damaging insects such as leafhoppers and whiteflies. Combined
with an attractant and a food source, the strain would infect the
insect either by ingestion or physical contact and provide an
effective means for controlling these pests. This particular
strain of fungus was deposited and stored as ATCC No. 74040.
Wright petitioned the government to grant him the ownership
rights to the invention. On February 24, 1997, the Office of the
General Counsel of the USDA issued a formal determination stating
that the domestic patent rights in the invention belonged to the
Government. Wright appealed this decision to the Department of
Commerce.
On October 10, 1997, following an administrative hearing,
the Department of Commerce affirmed the USDA's ownership rights
to the invention. On November 13, 1997, it denied Wright's
request for reconsideration.
A suit in district court followed and each party filed a
motion for partial summary judgment. The motions by the
defendants-appellees: United States; Willard J. Phelps,
Technology Transfer Officer of the United States Department of
Agriculture; and Daniel Glickman, Secretary United States
Department of Agriculture, addressed whether the final
determination of the United States Commerce Department in favor
of the USDA was arbitrary and capricious.
Wright raised a second issue in district court: whether the
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USDA has the right to grant an exclusive license to Troy
Biosciences, Incorporated ("TBI"). Since, the district court
found that the government owned the entire right, title and
interest in the invention, the second issue was not addressed.
II. STANDARD OF REVIEW
In making its determination of the issues, this Court may
only set aside an agency's decision if that decision is found to
be "arbitrary, capricious, an abuse of discretion, or otherwise
not in accordance with law." 5 U.S.C. § 706. The agency's
decision does not have to be ideal so long as the agency gave at
least minimal consideration to relevant facts contained in the
record. Harris v. United States, 19 F.3d 1090, 1096 (5th Cir.
1994). As long as a rational basis for the agency's decision
exists, it is not considered an abuse of discretion. Id.
III. DISCUSSION
The issue presented is whether pursuant to Commerce
Department Regulation, 37 C.F.R. § 501 et seq., the invention
belongs to the Government under § 501.6(a)(1) of the regulation,
or if Wright has a valid ownership claim under § 501.6(a)(2).
The relevant parts of § 501.6 read as follows:
(a) The following rules shall be applied in determining
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the respective rights of the Government and of the
inventor in and to any invention that is subject to the
provisions of this part:
(1) The Government shall obtain, except as herein
otherwise provided, the entire right, title and
interest in and to any invention made by any Government
employee.
* * *
(2) In any case where the contribution of the
Government, as measured by any one or more of the
criteria set forth in paragraph (a)(1) of this section,
to the invention is insufficient equitably to justify a
requirement of assignment to the Government of the
entire right, title and interest in and to such
invention, or in any case where the Government has
insufficient interest in an invention to obtain the
entire right, title and interest therein (although the
Government could obtain same under paragraph (a)(1) of
this section), the Government agency concerned shall
leave title to such invention in the employee, subject
however to the reservation to the Government of a
nonexclusive, irrevocable, royalty-free license in the
invention with power to grant licenses for all
governmental purposes.
(Emphasis added).
It is undisputed that Wright made the invention during
working hours as a government employee, that government funds
were used for the discovery and that the discovery was directly
related to the duties of Wright's employment.
Wright asserts that the government was only interested in
publishing his invention and did not initially file an
application for a patent. This, he asserts, impliedly granted
him the right to patent the invention under § 501.6(a)(2).
The USDA argues, as stated in the Department of Commerce's
4

opinion, "An agency's desire to publish an invention, does not
necessarily mean that it is not interested in the invention."
Therefore, the fact that the government wanted to publish the
invention did not constitute an "insufficient interest in the
invention" under § 501.6(a)(2). The Department of Commerce held
that Wright did not have a valid claim to the invention under §
501.6(a)(2) because the government's rights remained solely
within the purview of § 501(a)(1).
In determining what constitutes "insufficient interest" for
purposes of § 501(a)(2), this Court relies upon the Supreme
Court's holding in Thomas Jefferson Univ. v. Shalala, 512 U.S.
504, 512(1994), where the Court discusses an agency's right to
interpret its own rules. In Shalala, the Court held that an
agency's interpretation of its own rules must be given
controlling weight unless it is plainly erroneous or inconsistent
with the regulation. Id. at 512.
Upon review of the lengthy record provided in this appeal
and a review of the district court' holding, this Court concludes
that there was no abuse of discretion in determining that the
USDA has the right of ownership over this invention. This Court
grants great deference to the USDA's interpretation of the words
"insufficient interest" in § 501.6(a)(2). We do not find any
language in this section which would lead us to believe that the
district court's holding is blatantly inconsistent with § 501 and
5

its relevant sub-parts. Moreover, since the government
rightfully possesses ownership to this invention, we need not
address the issue of whether the USDA has the right to grant an
exclusive license to Troy Biosciences, Incorporated.
IV. CONCLUSION
Accordingly, we AFFIRM the district court's holding.
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