In Shukh v. Seagate Technology, LLC, No. 14-1406 (Fed. Cir. Oct. 2, 2015), the Federal Circuit held that reputational injury can confer standing in correction of inventorship claims under 35 U.S.C. § 256.
Dr. Shukh, a former employee of Seagate and a named inventor on seventeen patents, was fired by Seagate in 2009 and was unable to obtain a new job. Dr. Shukh then filed several claims against Seagate, including a claim to correct inventorship, alleging that Seagate failed to list him as an inventor on six patents and four pending patent applications. 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 reputational injury can provide standing if the injury is concrete and particularized. the Court then reversed the district court’s grant of summary judgment, concluding that there were questions of material fact whether omitting Dr. Shukh as a named inventor on the disputed patents caused him reputational injury. The Court explained that the fact finder could also determine that inventorship could affect employment prospects and result in an economic harm sufficient to confer standing. It further explained that a finding that Dr. Shukh was an inventor could rehabilitate his reputation in the industry. Based on these issues of fact, the Court remanded the inventorship claims to the district court.