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

A live 90-minute premium CLE video webinar with interactive Q&A


Thursday, July 8, 2021

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, June 11, 2021

or call 1-800-926-7926

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, including the case before the Supreme Court. The panel will also discuss considerations for contract provisions (for both assignee and assignor) and offer best practices 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. Under the current law of the Federal Circuit, when the doctrine does apply, it is strict, binding not just the inventor, but also, in some cases, those who later hired the inventor to work on competitive technologies. And it not only bars attacks that were known to the inventor at the time of the assignment, but it also bars 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).

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 best practices for dealing with assignors and patent invalidation challenges.

READ MORE

Outline

  1. Assignor estoppel in the courts vs. at the PTAB
  2. Recent decisions
  3. Considerations for contract provisions
  4. Best practices

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 has the PTAB treated the issue?
  • 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

Attend on July 8

Early Discount (through 06/11/21)

Cannot Attend July 8?

Early Discount (through 06/11/21)

You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include program handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

Download