To have constitutional standing for a claim, the remedy must provide some redress for the claimant. In the case of correcting inventorship on a patent, it generally means the correction will provide a financial advantage, although in theory it could be a reputational advantage. But Shukh v. Seagate Technology, LLC shows that’s pretty hard to prove.
Section 256 of the Patent Act provides that a court can correct the inventorship on an issued patent. However, a person claiming inventorship only has standing to ask for correction under the rules generally applied for constitutional standing, i.e., (1) an actual or imminent, concrete injury in fact; (2) a causal relationship between the injury and the conduct complained of; and (3) that the injury is capable of being redressed by a decision of the court.
In the leading case from the Federal Circuit on correcting inventorship, Chou v. University of Chicago, 254 F.3d 1347 (Fed. Cir. 2001), the court held that the inventor didn’t necessarily have to end up owning the patent to have standing for a claim, but rather only gain some benefit. In Chou’s case, she would be entitled to royalties and other financial benefit from the university if named as an inventor, which was good enough.
Chou also suggested that, under the right circumstances, reputational interest might be enough. In Shukh, Alexander Shukh claimed that he should have been named as inventor on six patent applications that Seagate filed. Shukh was a former employee who had assigned his rights to Seagate, so even if named as an inventor he would not own the patents or have any financial benefit. Therefore, all he could argue was reputational interest, but he failed at his proof.
Shukh’s own deposition testimony reflects … that his reputation as a leading scientist in his field and an extremely successful inventor was not damaged as a result of Seagate’s omission of Shukh as an inventor on six patents. Shukh stated repeatedly in his deposition that his reputation for “honesty, good organization, openness and straightforwardness and communications, good technical abilities, innovation and extreme competitiveness did not change from 2002 until .”
Shukh received a performance review that he was antagonistic to his employer and coworkers regarding ownership of patents, and claimed that this was a reputational harm. The problem was that this injury wasn’t redressable. More to the point perhaps, he received the review before he discovered that he was omitted as an inventor:
Therefore, Shukh’s reputation was not damaged because he tried to vindicate his right to be named as an inventor on the six disputed patents. Shukh’s reputation for insisting on appropriate credit and accusing others of plagiarism documented in the August 2007 performance review was established prior to the dispute over the six patents, and cannot have been a product of seeking to correct inventorship on those patents or a product of the fact that he was omitted from the patents.
(Emphasis in original.)
Shukh submitted 135 applications for other jobs after he was let go from Seagate but failed to get another job. Shukh didn’t offer any evidence that this was because of the lack of inventorship on patents, though. In theory it could: “for example, Shukh has presented no evidence that any of the jobs he applied for required unique technical skills that Shukh could have demonstrated through named inventorship on the six disputed patents.” Rather, Shukh claimed that his failure to gain employment was from being blacklisted, a theory unrelated to inventorship.
Finally, Shukh claimed that a reduced number of patents on which he was inventor would affect his reputation, but again failed at the proof. In theory that might be the case, but Shukh was a named inventor on at least 35 patents and hadn’t shown that 6 more would change his reputation.
So reputational harm can support a claim for correction of inventorship, but there just wasn’t adequate evidence in this case and the claim was dismissed.
Shukh v. Seagate Technology, Inc., No. 10-404 (JRT/JJK) (D. Minn. March 24, 2013).
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