News & Analysis as of

Medical Devices Patent Invalidity

Irwin IP LLP

No Handling Necessary: Industry Demo Was A Public Use: Minerva Surgical, Inc. v. Hologic, Inc., 2023 WL 1999900 (Fed. Cir. Feb....

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Be careful of showing your claimed inventions at tradeshows.  On February 15, 2023, the Federal Circuit (“CAFC”) affirmed a summary judgment ruling that, by merely showcasing an embodying device at an industry event (the...more

Smart & Biggar

2022 Highlights in Canadian Life Sciences IP and Regulatory Law

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Below are highlights from the Rx IP’s team’s 2022 updates (see also our Top 10 Rx IP Update Reads of 2022): Contents: 1. Patent decisions on the merits 2. PMNOC Regulations: Fifth-year anniversary of major amendments,...more

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

Knobbe Martens

Medical Device Patentee Petitions Supreme Court Regarding On-Sale Bar and Price Quotes

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A medical device patentee has asked the U.S. Supreme Court to save his design patent, related to an introducer sheath handle, from invalidity based on application of the “on-sale” bar, which prohibits patenting an invention...more

Quarles & Brady LLP

Junker v. Medical Components, Inc.: Pre-filing Offers for Sale Trigger Patent “On-Sale Bar”

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A recent Federal Circuit decision, Junker v. Med. Components, Inc., No. 2021-1649 (Feb. 10, 2022), serves as a warning to prospective filers that making pre-filing offers for sale, or engaging in discussions for future sales,...more

Knobbe Martens

Federal Circuit Reverses PTAB’s Invalidation of Patent Claims for an Artificial Heart Valve (Snyders vs St. Jude)

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On October 5, 2021, the U.S. Federal Circuit reversed a finding of invalidity by the Patent Trial and Appeal Board (PTAB) for patent claims related to an “artificial valve for repairing a damaged heart valve.”  ...more

Proskauer - Life Sciences

Prior Art Showing An Invention To Be “At Least Possible” Found Sufficient To Invalidate Surgical Device Patent

On August 23rd, the Federal Circuit upheld in part and reversed in part a decision from the Patent Trial and Appeal Board’s (PTAB or Board) concerning Ethicon’s patent on a robotic surgical tool, holding that the Board’s...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

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

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

Vinson & Elkins LLP

No Foul In Fair Play: Supreme Court Clarifies The Boundaries Of Assignor Estoppel

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On June 29, 2021, the Supreme Court clarified the “boundaries” of the patent-law doctrine of assignor estoppel in Minerva Surgical, Inc. v. Hologic, Inc., 594 U.S. (2021). The Court, in Westinghouse Elec. & Mfg. Co. v....more

Burr & Forman

Supreme Court Upholds, But Limits, Assignor Estoppel Doctrine

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On June 29, 2021, the Supreme Court limited the doctrine of assignor estoppel that has long prevented inventors from challenging the validity of patents they have assigned to a third party. ...more

Troutman Pepper

US Supreme Court Narrows Assignor Estoppel Doctrine in Continuation Patent Case

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On June 29, the Supreme Court issued a 5-4 decision in Minerva Surgical, Inc. v. Hologic, Inc., No. 20-440 (June 29, 2021) (slip opinion). Minerva involves a challenge to the “assignor estoppel” doctrine, which is an...more

Snell & Wilmer

Supreme Court Determines New Limitations to Assignor Estoppel Doctrine

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The Supreme Court upheld assignor estoppel in Minerva Surgical, Inc. v. Hologic, Inc., et al. but held that the Federal Circuit “failed to recognize the doctrine’s proper limits.” In doing so, the Court imposed new...more

Knobbe Martens

Assignors Can Challenge Validity so Long as They Do Not Contradict Assignment Representations

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MINERVA SURGICAL, INC. v. HOLOGIC, INC., et al. - Supreme Court of the United States.  Opinion of the Court written by Justice Kagan.  Justice Alito filed a dissenting opinion.  Justice Barrett filed a dissenting opinion,...more

Foley Hoag LLP

Supreme Court in Minerva Surgical Inc. v. Hologic Inc., Upholds but Limits the Scope of the Equitable Doctrine of Assignor...

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The judicially-derived patent-law doctrine of “assignor estoppel” prevents an inventor from assigning a patent to another for value and then later arguing in litigation that the patent is invalid. In Minerva Surgical Inc. v....more

McDermott Will & Emery

Supreme Court Grants Assignor Estoppel a Reprieve but Limits its Scope

The Supreme Court of the United States upheld the validity of doctrine of assignor estoppel but concluded that the US Court of Appeals for the Federal Circuit failed to recognize the boundaries of the doctrine. Minerva...more

McDonnell Boehnen Hulbert & Berghoff LLP

Minerva Surgical, Inc. v. Hologic, Inc. (2021) - Supreme Court Retains Doctrine of Assignor Estoppel, But With Limits

Patent law is replete with arcane (and often judge-made) doctrines, such as the doctrine of equivalence and obviousness-type double patenting.  In addition, long having been considered a property right (Oil States to the...more

Pillsbury Winthrop Shaw Pittman LLP

Minerva: Another Bright-Line Rule Dims

Assignor estoppel survived the Supreme Court’s decision in Minerva Surgical Inc. v. Hologic Inc., but the Court’s clarification requires diligence and presents opportunities. Review patent assignment and employee agreements...more

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