Posts Tagged: "Minerva v. Hologic"

On June 29, 2021, the Supreme Court issued its long-awaited decision in Minerva Surgical, Inc. v. Hologic, Inc. in which it clarified the proper limits of the centuries-old doctrine of assignor estoppel, which operates to prevent an inventor who assigns a patent to another for value from later claiming that the patent assigned is invalid during litigation, holding that the doctrine only applies when “the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” The decision underscores the need to keep in mind a number of factors when preparing and executing patent assignments.  

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.

The U.S. Supreme Court ruled 5-4 this morning 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.” Thus, while the Court rejected Minerva’s request that the doctrine be abandoned, the judgment of the U.S. Court of Appeals for the Federal Circuit (CAFC) was vacated and the case remanded to address “whether Hologic’s new claim is materially broader” than the ones that were assigned.

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.

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.