Sidley secured an important U.S. Supreme Court victory on behalf of Minerva Surgical, Inc. when the Supreme Court held that assignor estoppel was limited to circumstances where “an invalidity defense in an infringement suit conflicts with an explicit or implicit representation made in assigning patent rights,” (Op. 17), and thus it does not apply where, for example, the claims in the issued patent are materially broader than those in an application when it was assigned, or where an employee simply assigned to his or her employer patent rights in any future inventions developed during employment. Because the Federal Circuit applied a more expansive, bright-line rule that failed to account for the purposes of the doctrine, the Court vacated and remanded.
On January 8, 2021, the U.S. Supreme Court granted Sidley’s petition for writ of certiorari in Minerva Surgical Inc. v. Hologic Inc. At issue was whether and in what circumstances a defendant who assigned the patent in a patent infringement action may have a defense of invalidity heard on the merits. In concluding that an assignor can, in certain circumstances, have an invalidity defense heard on the merits, the Supreme Court did away with the Federal Circuit’s reflexive rule which, for decades, had prevented assignors from asserting invalidity defenses regardless of the equities.
The decision represents a significant victory for innovators, start-ups, and consumers. Under the Supreme Court’s new test, innovators will be free to challenge overbroad assertions of the scope of their assigned patents as they continue to bring improvements to the marketplace. Consumers will benefit from this increased competition and innovation.
Robert N. Hochman (Chicago) presented oral argument in the U.S. Supreme Court on April 21, 2021. The team also included Jillian Sheridan Stonecipher (Washington, D.C.), Caroline A. Wong (Chicago), and Merav Bennett (Chicago).