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
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
[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
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
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
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
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
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
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
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
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
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
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
[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 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
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
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
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
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
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
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
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
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
On June 29, 2021, the Supreme Court, in Minerva Surgical, Inc. v. Hologic Inc., et al., upheld the doctrine of assignor estoppel, vacated the judgment of the Federal Circuit and remanded for further proceedings consistent...more
Minerva Surgical, Inc. v. Hologic, Inc., et al, No. 20-440 (S. Ct. June 29, 2021) The Supreme Court issued a decision today upholding the validity of the doctrine of assignor estoppel and clarifying its proper limits....more