Shukh v. Seagate Technology, LLC et al

Filing 191

ORDER denying plaintiff's 171 Letter request for leave to file a motion for reconsideration to the Court's 140 Memorandum, Opinion and Order (Written Opinion). Signed by Judge John R. Tunheim on July 18, 2011. (DML)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
ALEXANDER M. SHUKH,

Civil No. 10-404 (JRT/JJK)
Plaintiff,

v.
SEAGATE TECHNOLOGY, LLC,
SEAGATE TECHNOLOGY, INC.,
SEAGATE TECHNOLOGY, and
UNKNOWN OWNERS AND
ASSIGNEES,

ORDER DENYING
LEAVE TO FILE
MOTION TO RECONSIDER

Defendants.

Constantine John Gekas and John C. Gekas, GEKAS LAW, LLP, 11
South LaSalle Street, Suite 1700, Chicago, IL 60603; James H. Kaster,
Katherine M. Vander Pol, and Sarah W. Steenhoek, NICHOLS KASTER,
PLLP, 80 South Eighth Street, Suite 4600, Minneapolis, MN 55402, for
plaintiff.
Calvin L. Litsey, Chad Drown, Jeya Paul, Charles F. Knapp, Elizabeth
Cowan Wright, and David J.F. Gross, FAEGRE & BENSON LLP, 90
South Seventh Street, Suite 2200, Minneapolis, MN 55402, for defendants.
Pending before the Court is plaintiff Alexander M. Shukh’s request for leave to
move for reconsideration of Part B.1 of this Court’s March 30, 2011 Order. (Docket No.
140.) That Order addressed Shukh’s standing to correct inventorship on grounds of
ownership under 35 U.S.C. § 256. (Docket No. 171.) A motion to reconsider under
Local Rule 7.1(h) is granted “only upon a showing of compelling circumstances.”
D. Minn. L.R. 7.1(h); see Transclean Corp. v. Bridgewood Servs., Inc., 134 F. Supp. 2d
1049, 1060 (D. Minn. 2001). A motion to reconsider should not be employed to relitigate
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old issues, but to “afford an opportunity for relief in extraordinary circumstances.” Dale
& Selby Superette & Deli v. United States Dept. of Agric., 838 F. Supp. 1346, 1347-1348
(D. Minn. 1993) (noting that granting leave to file a motion for reconsideration is
warranted when evidence has been admitted or excluded improperly, evidence has been
newly discovered, or improper actions of counsel have affected the outcome of the case).
Shukh argues that the recent United States Supreme Court case, Board of Trustees
of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., 131 S. Ct.
2188 (2011), calls into question this Court’s reliance on FilmTec Corp. v. Allied-Signal,
Inc., 939 F.2d 1568, 1573 (Fed. Cir. 1991). This Court applied FilmTec and its progeny
to rule that Shukh did not have standing to pursue correction of inventorship on the
grounds of ownership because his 1997 Employment Agreement automatically assigned
ownership of his future inventions to Seagate. (Order at 12, Docket No. 140.) Shukh
notes that Justice Breyer’s dissent in Stanford, which was joined by Justice Ginsberg,
criticizes FilmTec as relying on “slight linguistic differences in the contractual language
. . . mak[ing] too much of too little” to find that an assignment has been made
automatically. Stanford, 131 S. Ct. at 2202-03 (Breyer, J., dissenting). Shukh also points
to Justice Sotomayor’s concurrence, in which she states that she shares Justice Breyer’s
concerns about the Federal Circuit’s holding in FilmTec. Id. at 2199 (Sotomayor, J.,
concurring).
Whether FilmTec will eventually be overturned or modified is immaterial to
Shukh’s claims: the law remains that “[i]f the contract expressly grants rights in future
inventions, no further act is required once an invention comes into being, and the transfer
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of title occurs by operation of law.” DDB Tech., L.L.C. v. MLB Advanced Media, L.P.,
517 F.3d 1284, 1290 (Fed. Cir. 2008) (alterations and internal quotation marks omitted)
(citing FilmTec, 939 F.2d at 1573). The Court determined that Shukh’s employment
agreement created a present, automatic assignment of Shukh’s ownership rights in his
inventions. (Order at 12.) This Court has no authority to create a new rule of law based
on a dissent in a Supreme Court decision, and no new facts have been proffered calling
into question the Court’s prior determination. Because Shukh has not shown “compelling
circumstances” requiring the Court to reconsider its March 30, 2011 Order, the Court
denies Shukh’s request for leave to file a motion to reconsider. See D. Minn. L.R. 7(h).
Based upon all the files, records and proceedings herein IT IS HEREBY
ORDERED that Shukh’s request for leave to file a motion for reconsideration [Docket
No. 171] is DENIED.

DATED: July 18, 2011
at Minneapolis, Minnesota.

____s/
____
JOHN R. TUNHEIM
United States District Judge

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