Andrews Kurth Files Amicus Brief in Shukh v. Seagate Technology, LLC

(Washington, DC)—On November 12, 2015, Matthew Dowd, partner in the firm's Appellate and Patent Litigation sections, filed an amicus brief on behalf of two leading experts in the area of patent licensing, Raymond Nimmer, University of Houston Law Center Professor and former Dean, and Jeff C. Dodd, partner in the Intellectual Property and Corporate/Securities sections of Andrews Kurth. The amicus brief supports the petition for rehearing en banc in Shukh v. Seagate Technology, LLC.

The rehearing petition raises the question of whether the “automatic assignment” rule first announced in FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), but never explained in that or any other decision of this Court, should be overruled.

The amicus brief details the need for en banc review of the FilmTec rule:

"Overall, FilmTec created a unique rule in the law of patent assignments for future inventions. Because it was not moored to a clear and thorough analysis of precedent governing patent ownership, the FilmTec rule has left practitioners and their clients adrift in a sea of uncertainty as to ownership of inventions created by employees and contractors. We do not here take a position as to the soundness of the rule. Perhaps, upon a more thorough consideration, FilmTec may be determined to take the correct approach. Nonetheless, this case presents the opportunity for the Court to reexamine a rule of exceptional importance, in order 'to secure or maintain uniformity of the court’s decisions.'"

Prof. Nimmer and Mr. Dodd have followed this issue closely. They are the co-authors of the widely-cited, two-volume treatise Modern Licensing Law (Thompson West 2014).

The importance of this case has been highlighted by Professor Dennis Crouch on his popular Patently-O blog.

As released by the former Andrews Kurth Kenyon LLP