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The Supreme Court Upholds the Doctrine of Assignor Estoppel While Clarifying Its Scope | Kramer Levin Naftalis & Frankel LLP
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U S Supreme Court opinions: June 29
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Judge insists but narrow patent assignor prohibits estoppel
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From Lex Machina and Above The Law
Often amicus brief impact is felt in policy related matters. We see this in the amicus briefs cited in several cases already this term.
Reflecting this policy based importance, Justice Breyer wrote in his majority opinion in AMG Capital: The “Commission and its amici emphasize the policy-related importance of allowing the Commission to use § 13(b) to obtain monetary relief. They suggest that it is undesirable simply to enjoin those who violate the Act while leaving them with profits earned at the unjustified expense of consumers. See, e.g., Brief for Respondent 8–9; Brief for Truth in Advertising, Inc., as Amicus Curiae 7–13; Brief for American Antitrust Institute as Amicus Curiae 9–21; Brief for National Consumer Law Center et al. as Amici Curiae 10–20; Brief for Illinois et al. as Amici Curiae 5–11. They 1352 point to the
Two weeks ago, the Supreme Court heard oral argument in
Minerva Surgical Inc. v. Hologic, Inc. over the rather arcane issue of assignor estoppel. Stop - I can figuratively feel your eyes rolling after reading the phase “assignor estoppel” – “why would I care about that!?” Well, the potential validity of patents developed by your employees that are assigned to (
i.e., owned by) your company are at significant risk based on the potential outcomes of this case.
Assignor estoppel has differences in both philosophy and patent policy from licensee estoppel, which was abolished by the Supreme Court in
Lear, Inc. v. Adkins, in 1969. In