Steve Hansen Named Southern California "Super Lawyer" for 2016 

October 2015, Bloomfield Hills, Michigan  Hansen IP Law is pleased to announce that Steve Hansen was named as a Southern California "Super Lawyer" for 2016 by Super Lawyers Magazine.  "I began my legal career in Los Angeles and continue to litigate patent cases through my affiliation with the Los Angeles office of Lee Tran & Liang," said Mr. Hansen.  "Hansen IP Law also prepares and prosecutes patent applications for a number of Southern California-based clients.  I am grateful for the honor of being named a Super Lawyer in Southern California." 

Employees Who Assign Patent Rights to Employers May Have Standing to Challenge Their Omission as Inventors on Issued Patents

Employers do not automatically obtain legal ownership of the patent rights to their employees' inventions simply because of the employer-employee relationship.  Thus, it is a standard practice to require employees to assign their patent rights to their employers in an employment agreement.  This practice raises the following question: Can an employee (or ex-employee) file an action to correct inventorship on an issued patent in district court after assigning his or her patent rights to an employer?  In  Alexander Shukh v. Seagate Technology, LLC, Case No. 2014-1406, slip op. (Fed. Cir., October 2, 2015), the Federal Circuit answered "YES."  A copy of the opinion can be found  here .

In  Shukh the plaintiff and former employee of defendant Seagate assigned his patent rights to the company in an employment agreement at the outset of his employment.  After being terminated with several other employees, he filed an action under 35 U.S.C. ยง 256 in the U.S. District Court for the District of Minnesota seeking to add himself as an inventor to several Seagate patents.  Seagate asserted that because he had assigned his patent rights, the plaintiff lacked standing to bring an inventorship correction action under Section 256.  

The plaintiff asserted that he had standing because he had an ownership interest, a financial interest, and a reputational interest in the subject patents.  Shukh at 5. The district court granted summary judgment in favor of Seagate holding that none of the alleged interests conferred standing.

The Federal Circuit reversed and remanded, holding that there was a triable issue of fact as to whether Seagate's alleged omission of the plaintiff as an inventor caused a reputational injury and that a reputational injury, if proven, could confer standing to seek correction under Section 256. Id. at 7.  The Federal Circuit panel held that because the plaintiff had assigned his patent rights to Seagate, it was bound by Filmtec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991) to hold that the plaintiff lacked either a sufficient ownership interest or a sufficient financial interest to confer standing.  However, Filmtec did not preclude standing based on a reputational injury.

In prior cases, the Court had declined to hold that reputational injury could confer Article III standing. However, in Shukh the Court concluded that pecuniary consequences could flow from not being named as an inventor, including negative effects on the omitted inventor's present or future employment.  Id. at 7. The Federal Circuit panel acknowledged that the plaintiff's "reputation as an inventor" and "as an employee" could give rise to Article III standing to seek correction of inventorship under Section 256. Id. at 8 and 12. In particular, the panel found that there was an issue of fact as to whether the plaintiff's "negative reputation for seeking credit for his inventions is traceable to Seagate's omission of [him] as an inventor from the disputed patents."  Id. at 12. The panel also held that a trier of fact could conclude that the plaintiff suffered an economic harm to his employment prospects as a result of the alleged reputational injury and that his "inability to obtain employment is a concrete and particularized financial harm that suffices to create Article III standing." Id. 

There is no indication in Shukh that Seagate would be liable for monetary damages from a reputational injury arising out of being omitted as an inventor.  The Federal Circuit simply held that the plaintiff could seek judicial correction of inventorship under Section 256.

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About Hansen IP Law PLLC
Ha nsen IP Law is an intellectual property law firm that provides "Big Law" caliber services using a small firm platform.  Although based in suburban Detroit, we represent clients throughout the United States and abroad. We do not operate on a leveraged model.  Each of our clients is represented by an experienced intellectual property attorney with over a decade of "Big Law" experience, including as a partner in Los Angeles and Detroit firms. Unlike many firms of our size, we have substantial patent litigation experience in courts throughout the United States, which allows us to strategically strengthen your intellectual property portfolio.  For more information, please contact Steve Hansen at 248 504 4849 or [email protected]. You can also visit us on the web at www.hanseniplaw .com.