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Federal Circuit Review No. 72-2.
A Reputational Injury Alone May Confer Standing to Sue For Correction of Inventorship
Shukh v. Seagate Technology, LLC , No. 2014-1406, 2015 U.S. App. LEXIS 17311 (Fed. Cir. Oct. 2, 2015) (Before Moore, Wallach, and Taranto, J.) (Opinion for the court, Moore, J.). Click Here for a copy of the opinion.
Dr. Alexander Shukh sued Seagate for correction of inventorship on six patents and four pending patent applications, based on his employment as a research scientist at Seagate from 1997 to 2009. During his tenure, he was named as an inventor on 17 patents, and was named to Seagate’s “Inventor’s Hall of Fame.” He also acquired a reputation as excessively confrontational, including frequently accusing co-workers of stealing his ideas. In 2009, Dr. Shukh was laid off, along with 178 other Seagate employees in 2009. He has been unemployed since that time. Dr. Shukh alleged that Seagate’s refusal to list him as an inventor on several patents has caused him reputational harm, which has prevented him from finding other employment. The District Court granted Seagate’s summary judgment on Dr. Shukh’s claim to correct inventorship. The court held that there was no genuine issue of material fact about whether Dr. Shukh suffered reputational harm traceable to his omission from the contested patents. Dr. Shukh appealed the grant of summary judgment, along with numerous other rulings by the District Court, to the Federal Circuit.
The Court vacated the grant of summary judgment, holding that the District Court had improperly made findings of fact, and did not make all factual inferences in Dr. Shukh’s favor. The Court expressly held that concrete and particularized reputational injury alone can give rise to Article III standing to correct inventorship under § 256. Recognition as an inventor of an important patent is as significant to an inventor’s career as is authoring a scientific paper. Further, pecuniary consequences may flow from being designated an inventor, particularly for professionals employed as inventors. Here, Dr. Shukh presented numerous questions of material fact concerning whether his omission from the contested patents caused him a reputational injury.
Dr. Shukh presented evidence that the omission harmed his reputation as an inventor in the field of hard drive engineering, and contributed to his reputation for poor teamwork due to accusations that others were stealing his work. To support his allegations that the omission hurt his reputation as a scientist, Dr. Shukh showed that a scientist’s professional reputation is affected by how many patents he holds. Seagate itself valued its researchers being named on patents, conferring financial rewards and giving performance reviews based, in part, on how many patents name the researcher as an inventor. Dr. Shukh pointed to a performance review from the year some of the contested patents were filed, criticizing him for a drop-off in patent filings. He also presented evidence that the inventorship omission harmed his reputation for teamwork. During the time that contested patents were filed, Dr. Shukh’s manager wrote that Dr. Shukh was often not recognized for his contributions. If true, his reputation for accusing others of stealing his work would not be viewed as stemming from a combative personality, but from being wronged by his employer and co-workers.
Dr. Shukh further raised a material question of fact in connecting these reputational harms to a specific economic injury. Following his termination, while interviewing with another company, an engineer there told him that he would never get a job there because of his reputation.
Because Dr. Shukh raised material questions of fact about whether Seagate’s actions had harmed his reputation, and whether this harm had caused economic injury, the District Court improperly granted summary judgment. The remaining rulings of the District Court were affirmed without opinion.