No Foul In Fair Play: Supreme Court Clarifies The Boundaries Of Assignor Estoppel | Vinson & Elkins LLP jdsupra.com - get the latest breaking news, showbiz & celebrity photos, sport news & rumours, viral videos and top stories from jdsupra.com Daily Mail and Mail on Sunday newspapers.
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 limitations on when the equitable doctrine applies in a patent case.
The Court did away with the bright-line rule that any time an inventor assigns a patent, he or she cannot later argue that the patent is invalid. Previously, courts applied the rule without looking to the individual facts and circumstances in each case. But the Court held that a fact-specific review
is required when determining whether to apply the doctrine because it is rooted in equitable principles.
Friday, July 2, 2021
1. Summary
Patent law’s assignor estoppel doctrine bars the inventor and those in privity with him or her from challenging the validity during infringement litigation of a patent s/he had assigned. In Minerva Surgical, Inc. v. Hologic, Inc., et al., the Supreme Court limited the doctrine, holding it “applies when, but only when, the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” The case has implications for those administering a company’s patent protection procedures and in technology company M&A transactions; it also creates issues for the lower courts to resolve in determining whether the doctrine will apply.
Americans for Prosperity Foundation v. Bonta (No. 19-251),
Minerva Surgical v. Hologic (No. 20-440),
Johnson v. Guzman Chavez (No. 19-897),
PennEast Pipeline Co. v. New Jersey (No. 19-1309),
Yellen v. Confederated Tribes of the Chehalis Reservation (No. 20-543),
HollyFrontier Cheyenne Refining v. Renewable Fuels Assn (No. 20-472)
In the final day of OT20, the Court handed down its two biggest decisions of the term: In
Brnovich v. Arizona (No. 19-1257), the Court held (in a 6-3 decision by Justice Alito, with Justice Kagan leading the dissent), that two of Arizona’s recently enacted voting restrictions do not violate Section 2 of the Voting Rights Act, and that one in particular (an anti-ballot harvesting measure) was not enacted with a racially discriminatory purpose; and in
Thursday, July 1, 2021
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 Surgical, Inc. v. Hologic, Inc. Case No. 20-440 (Supr. Ct., June 29, 2021)(Kagan, Justice)(Barrett, Justice, dissenting)(Alito, Justice, dissenting). With the Court’s concern to maintain the underlying principle of fairness and the limits of doctrine of assignor estoppel in
Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., the Court vacated the Federal Circuit’s decision and remanded. In a 5-4 decision, Justice Elena Kagan delivered the opinion of the Court with dissenting opinions from Justices Samuel Alito and Amy Coney Barrett.