Patent Invalidation and Assignor Estoppel: Differing Standards, Minerva Surgical v. Hologic, Contract Considerations

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Thursday, July 8, 2021

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Program Materials

This CLE webinar will guide patent counsel on patent invalidation and assignor estoppel. The panel will discuss the courts' and PTAB's approaches to assignors in patent invalidation and recent decisions, and whether and how the Supreme Court’s Minerva decision affects the doctrine going forward. The panel will also discuss considerations for contract provisions (for both assignee and assignor) and for dealing with assignors and patent invalidation.

Description

The doctrine of assignor estoppel precludes inventors who have assigned their patent rights from challenging the validity of the patent. The Federal Circuit had broadly and strictly applied the doctrine, finding that it not only barred attacks that were known to the inventor at the time of the assignment, but it also barred attacks based on invalidity defenses that were unknown—and unknowable—when the assignment was executed. In contrast, the PTAB has decided not to apply the doctrine in inter partes review proceedings, for example in IPR2015-00978, and the Federal Circuit upheld that decision in Arista Networks, Inc. v. Cisco Sys., 908 F.3d 792 (Fed. Cir. 2018). See also, Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., IPR2013-00290, Paper 18 (P.T.A.B. Oct. 25, 2013) (precedential).

In January 2021, the U.S. Supreme Court agreed to consider the viability of the doctrine in court challenges in Minerva Surgical v. Hologic, Inc., (U.S. Jan. 8, 2021). Oral arguments were heard in April 2021 to answer the question: “May a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, have a defense of invalidity heard on the merits?” At the district court and Federal Circuit levels, the answer was “no.” See Hologic, Inc. v. Minerva Surgical, Inc., 325 F. Supp. 3d 507 (D. Del. June 28, 2018) and Hologic, Inc. v. Minerva Surgical, Inc., 957 F.3d 1256 (Fed. Cir. 2020). The Supreme Court issued a 5-4 decision on June 29, 2021. The majority upheld the doctrine of assignor estoppel but explained that “the doctrine is not limitless. Its boundaries reflect its equitable basis: to prevent an assignor from warranting one thing and later alleging another. Assignor estoppel applies when an invalidity defense in an infringement suit conflicts with an explicit or implicit representation made in assigning patent rights.” Minerva Surgical v. Hologic, Inc., 594 U.S. ___ at 17 (2021). On remand, the Supreme Court has directed the Federal Circuit to determine whether the new claim, which issued after the assignment of the patent rights, is materially broader than the claims that were assigned.

Listen as our authoritative panel of patent attorneys examines the doctrine, how it has evolved in the courts, and why the PTAB has decided not to recognize it. The panel will also explain whether and how the Supreme Court’s Minerva decision affects the doctrine going forward. The panel will discuss considerations for contract provisions (for both assignee and assignor) and dealing with assignors and patent invalidation challenges.

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Outline

  1. Assignor estoppel in the courts vs. at the PTAB
  2. The Supreme Court’s narrowed holding
  3. Considerations for contract provisions

Benefits

The panel will review these and other priority issues:

  • What role can an assignor play to invalidate a patent?
  • How have the courts treated the issue of assignor estoppel?
  • How did the Supreme Court’s majority and dissents address the issues?
  • How will courts implement the Supreme Court’s holding?
  • What does assignor estoppel mean for patent sale agreements? Or assignment agreements?

Faculty

Fues, Eric
Eric J. Fues

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Fues represents clients in domestic and international technology disputes, including patent and trade secret...  |  Read More

Puknys, Erik
Erik R. Puknys

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Puknys is consistently recognized for his work as a leading patent litigator. He has represented both plaintiffs...  |  Read More

Meyers, Megan
Megan L. Meyers

Attorney
Finnegan Henderson Farabow Garrett & Dunner

Ms. Meyers focuses on patent litigation, specifically Abbreviated New Drug Application (ANDA) matters at the district...  |  Read More

Roorda, Jeanette
Jeanette M. Roorda

Attorney
Finnegan Henderson Farabow Garrett & Dunner

Ms. Roorda focuses her practice on complex patent litigation related to the pharmaceutical and chemical fields. She...  |  Read More

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