Finding IP Value

Assignor Estoppel Under the Supreme Court’s Minerva Surgical v. Hologic Opinion

By: Stephen C. Hall

When the innovators of a new medical device made their invention in 1998, they may have hoped to sell the technology to a larger company, but they probably didn’t anticipate that doing so would lead to a Supreme Court case twenty-three years later.  Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298, (June 29, 2021).  The Supreme Court opinion limited how far an assignor of technology can go in challenging the patent rights in later patent infringement litigation filed against it, but it did acknowledge an assignor’s ability to use the invalidity defense in certain ways.  The excerpts provided here relate to practical applications of this case in an IP transaction context and are from a presentation by Steve Hall on December 2, 2021. 

Stephen C. Hall
Stephen Hall is a registered patent attorney, and he serves as leader of the Firm’s Intellectual Property Protection & Litigation Service Team.  His practice addresses both patent filing/prosecution before the United States Patent and Trademark Office as well as patent litigation in the federal courts.  A former research chemist, Steve has obtained patents for clients in a broad range of technical fields, including:  alternative energy, catalysts, chemical detection, electrical transmission line safety, electro-mechanical devices, ergonomic... Read More