Omitted inventor--the employee inventor can sue for reputational injury

As an inventor myself, I imagine that I would be unhappy if being omitted as an inventor to an invention and its resulting patent knowing that I’ve made important inventive contribution to the invention.  I am sure that any reasonable inventor would feel the same.  However, have you ever wondered if there are any recourses for you if you are employed by a company, made an important inventive contribution to the company’s blockbuster product and somehow being skipped over as an inventor on the patent?  Wonder no more--In Shukh v. Seagate Technology, LLC, No. 14-1406 (Fed. Cir. Oct. 2, 2015), the Federal Circuit answered that reputational injury can confer standing in correction of inventorship claims under 35 U.S.C. § 256.

Dr. Shukh is a former employee of Seagate fired by Seagate in 2009.  After his firing, he was unable to land a new job.   He was named as an inventor on seventeen of Seagate patents and claimed that Seagate failed to list him as an inventor on six other patents and four pending patent applications.  Then, Dr. Shukh filed several claims against Seagate including a claim to correct inventorship. 

The problem is that Dr. Shukh had already assigned-away his ownership rights to the patents to the company as part of his employment agreement.  In order to have the standing to sue, Dr. Shukh has to hang his standing on his alleged reputational harm due to Seagate’s failure to list him as a co-inventor on six different patents.  The district court granted summary judgment for Seagate and dismissed Dr. Shukh's claims, finding that an alleged reputational injury did not confer standing.

On appeal, the Federal Circuit held that “concrete and particularized reputational injury can give rise to Article III standing.”  Noting that “being considered an inventor of important subject matter is a mark of success in one’s field, comparable to being an author of an important scientific paper,” the court reasoned that “[p]ecuniary consequences may well flow from being designated as an inventor.”   This is particularly true when the claimed inventor is employed or seeks to be employed in the field of his or her claimed invention.  For example, 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.

The court found that there is a question of material fact as to whether Dr. Shukh’s omission as a named inventor on the disputed patents caused him reputational injury.  Specifically, Dr. Shukh presented evidence such that a trier of fact could conclude that this omission 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 to his accusations that others were stealing his work. Moreover, Dr. Shukh presented evidence from which a trier of fact could conclude that these reputational harms had economic consequences—namely, that Dr. Shukh was unable to find employment after he was terminated from Seagate.

Based on these issues of fact, the Court reversed the district court's grant of summary judgment and remanded the inventorship claims to the district court.

The practical implications: for the employers/companies, the company should always make sure the correct inventorship in its patent filings—it is always much easier to obtain necessary title transfer documents (assignments) when the inventors are working for you; for the employee/inventors, you now can sue your previously employer for ignoring your contribution to their blockbuster product.

Thanks for reading.

Connie

cwan@patentonomy.com