Posts Tagged: "assignor estoppel"

On Remand from SCOTUS, CAFC Again Upholds Ruling for Hologic Based on Assignor Estoppel

The U.S. Court of Appeals for the Federal Circuit (CAFC) today, in a precedential decision, revisited its 2020 holding that the doctrine of assignor estoppel bars Minerva Surgical, Inc. from challenging the validity of Hologic Inc.’s patent directed to a device for treating a uterus. The decision comes on remand from the U.S. Supreme Court, which vacated the 2020 ruling and returned it to the CAFC for further consideration of the Justices’ determination that the doctrine of assignor estoppel comes with certain limits. The Supreme Court ruled in June 2021 that assignor estoppel—which bars the assignor of a patent from later attacking the patent’s validity—“is well grounded in centuries-old fairness principles…[but] applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” Thus, while the Court rejected Minerva’s request that the doctrine be abandoned, it vacated the CAFC’s 2020 judgment and remanded the case to address “whether Hologic’s new claim is materially broader” than the ones that were assigned.

Industry Commenters Say Minerva Ruling is a Win for Employee Mobility

Yesterday, the U.S. Supreme Court ruled 5-4 in Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC that the doctrine of assignor estoppel”—which bars the assignor of a patent from later attacking the patent’s validity—“is well grounded in centuries-old fairness principles…[but] applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” Most expected the Court to rule along those lines following oral argument earlier this year, but the split decision, which included two separate dissents, could signal this Court’s future interest in patent cases. Commenters below also said that the ruling will result in the doctrine of assignor estoppel being applied much less frequently and in much narrower circumstances, and that it will almost certainly never be applied in employee agreement situations going forward. Here is what some stakeholders had to say.

Assignor Estoppel: Can’t We Just Leave It To Congress? (Answer: Not Really)

On Wednesday, April 21, the U.S. Supreme Court heard oral arguments in Minerva Surgical, Inc. v. Hologic, Inc., which concerns the doctrine of assignor estoppel. Generally speaking, assignor estoppel prohibits the assignor of a patent from later attacking the patent’s validity in court. Minerva argues that assignor estoppel is an ill-conceived relic of a bygone era that the Court should discard or at least substantially limit. Hologic argues that the doctrine is a bedrock part of the common law—a background against which Congress has been legislating for over a century—that the Court should preserve in full.

Justices Lean Toward Limiting, Not Eliminating, Assignor Estoppel Doctrine in Minerva v. Hologic

The U.S. Supreme Court heard oral arguments today in Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC, which essentially asks the Court to decide whether the doctrine of “assignor estoppel”—which bars the assignor of a patent from later attacking the patent’s validity—should be scrapped, retained or limited. The Court’s questioning indicated that it seems uncomfortable with discarding the doctrine entirely, as Minerva would like.

NYIPLA Tells SCOTUS to Scrap CAFC’s ‘Per Se’ Approach to Assignor Estoppel in Minerva v. Hologic

Minerva Surgical, Inc. petitioned the Supreme Court of the United States (SCOTUS) in September 2020 to consider the question “whether a defendant in a patent infringement action who assigned the patent, or is [next in line] with an assignor of the patent, may have a defense of invalidity heard on the merits.” The petition was granted in January and additional amici have recently weighed in, including the New York Intellectual Property Law Association (NYIPLA).