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Assignor Estoppel Patents Patent Infringement

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (August 8 – August 12): Taking A Round Trip On The Assignor Estoppel Express

For most of us, we’re stuck in the August heat, on delayed European vacations, or hopefully just hanging out at the beach. But for the Court it still was work as usual, including a return trip to the Federal Circuit for the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Hologic, Inc. v. Minerva Surgical, Inc. (Fed. Cir. 2022)

Last year, the Supreme Court declined an invitation to abrogate the doctrine of assignor estoppel by an assignor sued for patent infringement in Minerva Surgical v. Hologic.  Nevertheless, the Court followed its proclivities...more

Knobbe Martens

Claim Cancellation Before Assignment Does Not Preclude Assignor Estoppel

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Summary: Despite cancelling a claim prior to assignment, assignor estoppel still applied to bar invalidity defenses against a related claim because the assignor warranted the validity of the cancelled claim and the cancelled...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Minerva Surgical, Inc. v. Hologic, Inc., 141 S....

The inventor of a patent assigned to Hologic subsequently founded Minerva Surgical. Hologic then filed a continuation with broader claims. Based on that broader patent, Hologic brought an infringement case against Minerva,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Introduction

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 exception. It briefly returned to live...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[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 P.L.L.C.

[Webinar] Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions - February 17th, 1:00 pm - 2:00 pm EST

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

Skadden, Arps, Slate, Meagher & Flom LLP

Supreme Court Opens Door for Assignors To Challenge Patent Validity

Takeaways - Minerva Surgical v. Hologic limits the application of assignor estoppel, which bars inventor-assignors from challenging patents they obtained. If a buyer-assignee later expands the scope of its claim, under...more

Manatt, Phelps & Phillips, LLP

Supreme Court: Assignor Estoppel Survives, but Only for Explicit or Implicit Representations

In Minerva Surgical, Inc. v. Hologic, Inc., the Supreme Court held, in a 5–4 opinion, that the doctrine of assignor estoppel continues to apply, but only for an assignor’s invalidity assertion that contradicts explicit or...more

Haug Partners LLP

2021 Year in Review: Noteworthy Precedent for Patent Litigators

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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

American Conference Institute (ACI)

[Event] Paragraph IV Disputes Conference - November 9th - 10th, New York, NY

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

Foley & Lardner LLP

Supreme Court Limits Patent Assignor Estoppel

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In Minerva Surgical, Inc. V. Hologic, Inc., the Supreme Court limited the equitable doctrine of assignor estoppel that prevents an assignor from subsequently challenging the validity of the patent he or she assigned. The...more

Knobbe Martens

Federal Circuit Review - June 2021

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Bulk-Filed Patent Applications Claiming Distant Priority Trigger Prosecution Laches - In Hyatt v. Hirshfeld, Appeal No. 18-2390, the Federal Circuit held that the PTO met its burden to prove prosecution laches for bulk-filed...more

Knobbe Martens

Supreme Court Upholds, but Limits, Patent Infringement Defense of “Assignor Estoppel”

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The U.S. Supreme Court recently decided a case resolving a patent dispute between two medical device companies, Hologic, Inc. and Minerva Surgical.  The opinion was closely watched because it raised the question of whether an...more

Haug Partners LLP

Minerva V. Hologic: Assignor Estoppel Doctrine Retained, But Limited

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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

Blank Rome LLP

Supreme Court Sets Limits for Assignor Estoppel

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The Supreme Court’s recent decision in Minerva Surgical Inc. v. Hologic, Inc. has drastically limited the doctrine of assignor estoppel, requiring patent practitioners to reconsider assignment and other contractual provisions...more

McCarter & English, LLP

“You Can’t Challenge This (Unless)”—SCOTUS Upholds But Limits 140-Year-Old Doctrine Of Assignor Estoppel

The doctrine of assignor estoppel bars an inventor who assigns a patent to a third party from later arguing that the assigned patent is invalid. The Supreme Court has now upheld this doctrine but has limited its scope,...more

Buckingham, Doolittle & Burroughs, LLC

Assignor Estoppel is Alive and Well after Minerva v. Hologic

The Supreme Court clarified the doctrine of assignor estoppel in its June 29th Minerva v. Hologic opinion. In doing so, the Court vacated the Federal Circuit’s opinion estopping Minerva from arguing that Hologic’s patent is...more

Williams Mullen

Supreme Court Upholds but Narrows Assignor Estoppel: What This Means For Your Company and its Employees

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On June 29, 2021, the Supreme Court published its divisive opinion in Minerva Surgical, Inc. v. Hologic, Inc., Et. Al. The 5-4 decision penned by Justice Kagan upheld the centuries-old doctrine of Assignor Estoppel, while...more

Fitch, Even, Tabin & Flannery LLP

Supreme Court Sets Boundaries for Assignor Estoppel in Minerva Surgical v. Hologic

The U.S. Supreme Court’s June 29 decision in Minerva Surgical, Inc. v. Hologic, Inc. has important implications for inventors who assign patent rights, employers to whom employees assign patent rights, other assignees, and...more

Proskauer Rose LLP

Supreme Court Rules that Inventors Can Contest the Validity of Patents After Assigning Them

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In a decision reaching all corners of the technology sector, the U.S. Supreme Court on June 29, 2021 held that, when fairness requires, a patent inventor can contest a patent's validity after assigning it to a third party....more

Bradley Arant Boult Cummings LLP

High Court Leaves the Doctrine of Assignor Estoppel Intact, with Limits

Contrary to some predictions, assignor estoppel did not suffer the same fate in the hands of the Supreme Court as licensee estoppel in Lear v. Adkins. In fact, the doctrine, which essentially boils down to limiting an...more

Shutts & Bowen LLP

Minerva Surgical, Inc. v. Hologic Inc.: The Supreme Court Limits the Scope of Assignor Estoppel

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Rooted in the principle of fairness, the doctrine of assignor estoppel generally prevents an inventor, who had previously assigned their patent rights to another for value, from later contesting the validity of the assigned...more

McDonnell Boehnen Hulbert & Berghoff LLP

Supreme Court Retains Doctrine of Assignor Estoppel, But With Limits

The Supreme Court, speaking through a five-justice majority, has reaffirmed the equitable principle of assignor estoppel while at the same time limiting its application in Minerva Surgical, Inc. v. Hologic, Inc. Assignor...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter - June 2021

[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

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