Shukh v. Seagate Technology, LLC
803 F.3d 659
| Fed. Cir. | 2015Background
- Dr. Alexander Shukh, a Seagate engineer (1997–2009), was named on 17 Seagate patents but alleges Seagate omitted him from six issued patents and four pending applications relating to semiconductor technology.
- He signed an employment agreement assigning to Seagate all invention rights and Seagate policy required internal disclosure/forms for patent filings; inventors had to identify co-inventors on disclosure forms.
- After termination in 2009, Shukh remained unemployed and alleges reputational and economic harm stemming from omission as inventor; he also asserted discrimination and retaliation claims (on appeal, most of those claims were resolved for Seagate and not disturbed here).
- District court dismissed several contract and related claims and granted summary judgment to Seagate on Shukh’s 35 U.S.C. § 256 (correction of inventorship) claim for lack of standing, finding no reputational injury; it also granted summary judgment on fraud and employment-discrimination/retaliation claims.
- On appeal the Federal Circuit considered whether reputational injury can confer Article III standing for a § 256 inventorship correction claim and reviewed whether genuine disputes of material fact existed about reputational and economic injury tied to omission from patents.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether an omitted inventor can have Article III standing based on reputational injury to pursue a § 256 correction of inventorship claim | Shukh: reputational harm from omission is concrete, particularized, and caused economic injury (unemployment); thus sufficient for standing | Seagate: employment assignment eliminated ownership/financial interests; reputational harms are speculative/attenuated and do not confer standing | Reputational injury can supply Article III standing; genuine disputes of fact exist about whether Shukh suffered reputational and economic harms traceable to omission — summary judgment vacated and remanded on § 256 claim |
| Whether assignment in employment agreement strips all bases for standing to challenge inventorship | Shukh: assignment does not foreclose standing based on reputational harm | Seagate: Filmtec controls — assignment conveys ownership/financial interests so those bases for standing fail | Panel is bound by Filmtec; ownership and financial interests held lacking, but reputational theory remains viable |
| Whether district court properly granted summary judgment on reputational injury (no genuine dispute) | Shukh: evidence (expert testimony, Seagate incentives, performance reviews, unemployment tied to reputation) creates triable issues | Seagate: record shows Shukh already had strong reputation and negative traits; omission did not change views of colleagues; harms too attenuated/not redressable | District court improperly made factual findings and inferences for Seagate; triable issues exist on (1) harm to inventor reputation, (2) harm/worsening of reputation for seeking credit, and (3) economic consequences — remand required |
| Whether other appealed rulings (discovery, discrimination/retaliation, fraud, contract-based claims) warrant reversal | Shukh: challenged multiple discovery and ancillary rulings and substantive dismissals/summary judgments | Seagate: district court rulings were correct | Federal Circuit affirmed the district court on all other challenged holdings; only the § 256 standing/summary judgment ruling was vacated and remanded |
Key Cases Cited
- Filmtec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir.) (assignment of invention rights under employment agreement conveys ownership/financial interests)
- Chou v. Univ. of Chi., 254 F.3d 1347 (Fed. Cir.) (discusses reputational value of being named inventor; declined to decide standing on reputational injury alone)
- Grober v. Mako Prods., Inc., 686 F.3d 1335 (Fed. Cir.) (summary judgment review standard for Federal Circuit)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S.) (summary judgment standard and credibility/inference rules)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (U.S.) (Article III standing requirements: concreteness and particularization)
- Larson v. Correct Craft, Inc., 569 F.3d 1319 (Fed. Cir.) (declined to resolve whether reputational injury alone suffices for standing)
- DDB Tech., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284 (Fed. Cir.) (standing analysis in patent-related disputes)