Reputational Injury Confers Standing to Sue For Correction of Inventorship

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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.

The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 4 Comments comments.

  1. Joachim Martillo October 16, 2015 9:56 am

    SAWS or similar USPTO improper “quality assurance” program may have lead to comparable reputational harm by stymieing an effort to obtain a patent. I wonder whether such reputational harm might be actionable in the Federal Court of Claims.

  2. Night Writer October 16, 2015 10:30 am

    >>the District Court had improperly made findings of fact

    That is only OK if you are the SCOTUS (finding that all “abstract” claims as defined by Alice do not promote progress and are thus unconstitutional).

  3. Night Writer October 16, 2015 10:34 am

    >>SAWS or similar USPTO improper “quality assurance” program

    @1: might be. I prosecuted one that was targeted by the PTO. I think about $100K of the client’s money was wasted. If not reputational, there must be a cause of action against the PTO, if only they weren’t the sovereign.

    As to this case, what a nightmare for a company. The inventor getting discovery for your invention disclosures and preparation documents. Wow. What a mess that is going to be.

  4. Joachim Martillo October 16, 2015 2:33 pm

    @Night Writer#3 There is always the Court of Federal Claims or the ongoing Class Action lawsuit.