Docket No. 2014-1406
MOORE, WALLACH, TARANTO
October 2, 2015
Update: Cert. denied 6/27/16 (regarding “automatic assignment” issue)
Brief Summary: Dr. Shukh’s assignment conveyed legal title to Seagate so he had no ownership or financial issue in six patents. But decision was vacated and remanded with respect to claims of reputational damage (“if the claimed inventor can show that being named as an inventor on a patent would affect his employment, the alleged reputational injury likely has an economic component sufficient to demonstrate Article III standing.”)
Summary: Dr. Shukh appealed DC dismissal of some of his claims for failure to state a claim, its grants of SJ to Seagate, and several discovery and other orders. One of Dr. Shukh’s claim was for correction of inventorship under 35 USC § 256 on six patents, which was denied by the DC but vacated and remanded here. As an employee of Seagate, he signed its standard employment agreement in which he “agreed to ‘hereby assign to [Seagate] all [his] right, title, and interest in and to any inventions’ made while at Seagate.” Dr. Shukh argued he had ownership, financial and reputational interests in the six patents. The DC first found he had not ownership or financial interest, and later granted Seagate SJ that he had no reputational interest either, and therefore had no standing. The FC panel refused to overrule its Filmtec holding (FC 1991) backing the decision that the assignment conveyed legal title to Seagate. But it held “that concrete and particularized reputational injury can give rise to Article III standing” since “being considered an inventor of important subject matter is a mark of success in one’s field, comparable to be being an author of an important scientific paper” (Chou, FC 2001; see also Lujan, US 2002 (both declining to decide this issue)). The panel wrote that “if the claimed inventor can show that being named as an inventor on a patent would affect his employment, the alleged reputational injury likely has an economic component sufficient to demonstrate Article III standing.” Here, it found a question of material fact on this point since “a trier of fact could conclude that [the failure to name him as an inventor] injured his reputation in at least two ways: first, it harmed his reputation as an inventor in the field of semiconductor physics, and second, it contributed to his reputation for poor teamwork due in part his accusations that others were stealing his work.” Also considered important was “evidence that his alleged reputational harm had an economic component” and affected his employment status (unemployed since 2009). Altough the FC panel noted it “sympathize[d] with” the DC and “[i]t issued a number of thoughtful and thorough orders in what must have been a very difficult case”, it nonetheless vacated and remanded the case on the reputational injury issue.