Alexander Shukh v. Seagate Tech. (Fed. Cir. 2015) (en banc petition)
In an en banc petition, Shukh has challenged the Federal Circuit’s “automatic assignment” rule announced in its 1991 FilmTec decision. The basic rule from the Federal Circuit is that a pre-invention contract that states “I hereby assign” potential future inventions is deemed an effective transfer of title even though the future inventions have not yet been conceived. The more standard interpretation of a purported transfer of a not-yet-owned property is, at most, as a conveyance of equitable rights but not legal title. See Stanford v Roche (2011) (Breyer, J., dissenting) (citing G. Curtis, A Treatise on the Law of Patents for Useful Inventions §170 (1867)). Legal title then requires a new affirmative act by the seller once title is acquired. See Pomeroy on Equity Jurisprudence §1287 (1918); Joseph Story, Equity Jurisprudence, §1040 (1853); Murray, Corbin on Contracts §50.2 (2007); UCC Section 2-105(2) (“A purported present sale of future goods or of any interest therein operates as a contract to sell.).
This is an issue that has been boiling under the surface for some time and the court should grant en banc rehearing.
The petition raises a second issue involving attorney-client privilege that could have an important impact on patent prosecution.
Whether, in a Section 256 Correction of Inventor action, does the common interest doctrine of attorney-client privilege entitle an inventor to access and use his own invention records and communications?
A potential outcome of this decision could be further clarification as to the relationship of the attorney to inventors who are the employees of the client at a time when the inventors continue to have title to the invention at name-listing rights.
Read the petition: AMS En Banc Petition