[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
Sterne, Kessler, Goldstein & Fox invites you to a webinar, "Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions," on Thursday, February 17, 2022. In conjunction with the release of the firm's...more
As the world marched forward in the face of the lingering covid-19 global pandemic, the Supreme Court and Federal Circuit followed suit, issuing several noteworthy decisions of which patent litigators should be aware in 2022....more
Join the conference that the “who’s who” of Hatch-Waxman litigators have designated as the forum which sets the standards for Paragraph IV practice. ACI’s Paragraph IV Litigation Conference is returning LIVE & IN-PERSON to...more
In This Issue - Assignor Estoppel: When Are Inventors Allowed to Attack Their Own Inventions? In Minerva v. Hologic, the Supreme Court recently upheld the patent-law doctrine of assignor estoppel—which bars the...more
On June 29, 2021, the Supreme Court in a 5-4 decision retained the doctrine of assignor estoppel. However, the Court also held that “the Federal Circuit has applied the doctrine too expansively.” Accordingly, the Supreme...more
[co-authors: Patrick Murray, Risa Rahman, and Jae Bandeh] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return...more
On April 21, the U.S. Supreme Court heard oral arguments in Minerva Surgical, Inc. v. Hologic, Inc., a case involving whether the doctrine of assignor estoppel should be retained, abolished, or limited. In general, assignor...more
As previously reported, in January 2021, the Supreme Court granted a petition for a writ of certiorari filed by Minerva Surgical, Inc. on the question of “whether a defendant in a patent infringement action who assigned the...more
On January 8, 2021, the U.S. Supreme Court agreed to hear a case calling for it to abolish or limit the doctrine of assignor estoppel. See Minerva Surgical, Inc. v. Hologic, Inc., et al., No. 20-440, 2021 WL 77248 (U.S. Jan....more
On January 8, 2021, the Supreme Court granted a petition for a writ of certiorari filed by Minerva Surgical, Inc. on September 30, 2020. The question presented is “whether a defendant in a patent infringement action who...more
Last Friday, the U.S. Supreme Court granted certiorari in Minerva Surgical v. Hologic, thereby agreeing to resolve a long-running debate on patent law’s doctrine of assignor estoppel. Minerva Surgical has asked the Court to...more
As many readers know, the Supreme Court just granted a petition for certiorari in Minerva Surgical, Inc. v. Hologic, Inc. The case asks the Supreme Court to abolish the doctrine of assignor estoppel. But the Supreme Court...more
Last spring in Hologic, Inc. v. Minerva Surgical, Inc., the Federal Circuit ruled that the doctrine of assignor estoppel does not prevent an assignor from lodging a validity challenge of either patent in an IPR proceeding. In...more
The US Court of Appeals for the Federal Circuit reiterated that while assignor estoppel prevents a party that assigned a patent to another party from later challenging the validity of the assigned patent in district court, it...more
HOLOGIC, INC. v. MINERVA SURGICAL, INC. Before Wallach, Clevenger, and Stoll. Appeals from the United States District Court District of Delaware. Summary: The doctrine of assignor estoppel precludes an assignor from...more
On Wednesday, the Federal Circuit held that while assignor estoppel is applicable in district court proceedings, petitions for inter partes review continue to not be subject to the equitable remedy. Assignor estoppel is an...more
The inventor on the patent, Dr. Cheriton, was employed by Cisco as a technical advisor and chief product architect at the time he filed the application that led to the patent. Dr. Cheriton assigned all rights to the...more
In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more
A preliminary decision in the District Court of Delaware introduces the possibility that a patentee’s victory on assignor estoppel in the district court could quash a co-pending IPR proceeding at the PTAB. Assignor estoppel...more
Assignor Estoppel Does Not Apply in the IPR Context - In Arista Networks, Inc. v. Cisco Systems, Inc., Appeal Nos. 2017-1525, 2017-1577, the Federal Circuit held that the plain language of 35 U.S.C. § 311(a) unambiguously...more
Assignor estoppel is an equitable doctrine that prevents a party who assigns a patent to another from later challenging the validity of the assigned patent. As reported in a prior post, the Federal Circuit recently stated...more
Addressing the applicability of assignor estoppel to inter partes review (IPR) proceedings, the US Court of Appeals for the Federal Circuit found that Congress’ intent was clear: assignor estoppel does not apply. Arista...more
The Federal Circuit on Nov. 9, 2018 held that assignor estoppel does not apply to IPRs: Arista Networks, Inc. v. Cisco Sys., Inc., No 17-1725, slip. Op. at 17-23 (Fed. Cir. Nov. 9, 2018.) - The Court held: - “We...more
Assignor estoppel is a long-established, common-law doctrine of equity, which prevents a party who assigns a patent to another from later challenging the validity of the assigned patent. The doctrine also applies to parties...more