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Minerva Surgical Inc. v. Hologic Inc.

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Supreme Court of the United States
Minerva Surgical Inc. v. Hologic Inc.
Term: 2020
Important Dates
Argued: April 21, 2021
Decided: June 29, 2021
Outcome
Vacated and remanded
Vote
5-4
Majority
Elena Kagan • Chief Justice John Roberts • Stephen Breyer • Sonia Sotomayor • Brett Kavanaugh
Dissenting
Samuel Alito;
Amy Coney Barrett • Clarence Thomas • Neil Gorsuch

Minerva Surgical Inc. v. Hologic Inc. is a case argued before the Supreme Court of the United States on April 21, 2021, during the court's October 2020-2021 term.

In a 5-4 ruling, the U.S. Supreme Court vacated the U.S. Court of Appeals for the Federal Circuit's ruling and remanded the case for further proceedings, holding that the Federal Circuit was right to uphold assignor estoppel, but assignor estoppel applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations they made in assigning the patent. Justice Elena Kagan delivered the court's majority opinion. Justice Samuel Alito filed a dissenting opinion. Justice Amy Coney Barrett filed a dissenting opinion, joined by Justices Clarence Thomas and Neil Gorsuch.[1] Click here for more information about the ruling.

HIGHLIGHTS
  • The case: Csaba Truckai was listed as an inventor on two patents related to procedures and devices for endometrial ablation that he later assigned to the company he co-founded, Novacept. Novacept was ultimately acquired by Hologic and the company inherited the patents' interests. Truckai left the company and co-founded Minerva Surgical. At Minerva, he developed a new product related to endometrial ablation. Hologic filed patent infringement claims against Minerva. Minerva filed review claims for the patents with the U.S. Patent and Trademark Office. The office found that one patent was not patentable and the Federal Circuit upheld the ruling. Hologic argued that Minerva could not challenge the claims' validity based on the doctrine of assignor estoppel. Both parties cross-appealed to the U.S. Court of Appeals for the Federal Circuit. The court affirmed-in-part and vacated-in-part the district court's orders. Click here to learn more about the case's background.
  • The issues: The case concerned patent infringement claims and the doctrine of assignor estoppel.
  • The questions presented: "Whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits."[2]
  • The outcome: The U.S. Supreme Court vacated the U.S. Court of Appeals for the Federal Circuit's ruling and remanded the case for further proceedings.


    • The case came on a writ of certiorari to the United States Court of Appeals for the Federal Circuit. To review the lower court's opinion, click here.[3]

    Timeline

    The following timeline details key events in this case:

    Background

    Csaba Truckai was listed as the inventor on both patents at issue in the case, which relate to procedures and devices for endometrial ablation.[3] Truckai was a co-founder of the company Novacept. He assigned his interests in the patents to Novacept. In 2004, Novacept was acquired by Cytyc Corporation, which gained the rights to the patents. In 2007, Hologic, Inc. ("Hologic") acquired Cytyc and gained its patent rights. Truckai left the company and founded Minerva Surgical in 2008. He and others at Minerva developed the Endometrial Ablation System (EAS) and it was approved by the Food and Drug Administration (FDA) in 2015.[3]

    In November 2015, Hologic filed two patent infringement claims against Minerva Surgical with the U.S. District Court for the District of Delaware relating to the endometrial ablation procedures and devices. Minerva filed petitions for intellectual property rights (IPR) with the U.S. Patent and Trademark Office, challenging the patentability of the two patents at issue.[4] The patent board granted review of one patent and denied review of the other, and ruled that the reviewed patent was unpatentable. Hologic appealed to the United States Court of Appeals for the Federal Circuit.[3]

    Meanwhile, Minerva moved to dismiss Hologic's infringement claim on the reviewed patent in district court. The court denied the request, holding that the patent was not cancelled and the patent board's finding could not affect the district court proceedings until the appeal was resolved. Hologic moved for summary judgment, arguing that Minerva couldn't challenge the infringement claims for either patent due to the doctrine of assignor estoppel.[3] The district court granted summary judgment for both patents. The case proceeded to a jury trial. The jury found that Hologic was entitled to monetary damages in lost profits and royalties, based on Minerva's infringement of both patent claims. The district court entered judgment on the verdict. After trial, Hologic moved for a permanent injunction to stop Minerva from further infringement.[3]

    Following the trial, the patent for the unreviewed patent expired and the Court of Appeals for the Federal Circuit upheld the patent board's review findings of the other patent. As a result, the district court denied Hologic's motion for a permanent injunction and for supplemental damages. Hologic and Minerva appealed to the Federal Circuit.[3]

    On appeal, the U.S. Court of Appeals for the Federal Circuit affirmed-in-part and vacated-in-part the District of Delaware's judgment, and remanded the case.[3]

    The Federal Circuit's conclusion in its majority opinion reads as follows:[3]

    “ For the foregoing reasons, we affirm the district court’s denial of Hologic’s motions for a permanent injunction, enhanced damages, and ongoing royalties for infringement of the asserted ’183 patent claims. We also affirm its denial of Hologic’s requests for supplemental damages to include Minerva’s redesigned product, and for increased and enhanced supplemental damages. Finally, we affirm the district court’s summary judgment of no invalidity and infringement, summary judgment that assignor estoppel bars Minerva from challenging the validity of the asserted ’348 patent claim, and denial of Minerva’s motion for judgment as a matter of law of no damages or, alternatively, for a new trial on reasonable royalty damages.


    We vacate the district court’s award of pre- and post-judgment interest on the supplemental damages award, and remand for the district court to calculate the interest award in accordance with this decision.[5]

    		”

    Questions presented

    The petitioner presented the following questions to the court:[2]

    Questions presented:
    “ Whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.[5] ”

    Oral argument

    Audio

    Audio of oral argument:[6]



    Transcript

    Transcript of oral argument:[7]

    Outcome

    In a 5-4 ruling, the U.S. Supreme Court vacated the U.S. Court of Appeals for the Federal Circuit's ruling and remanded the case for further proceedings, holding that the Federal Circuit was right to uphold assignor estoppel, but assignor estoppel applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations they made in assigning the patent. Justice Elena Kagan delivered the court's majority opinion. Justice Samuel Alito filed a dissenting opinion. Justice Amy Coney Barrett filed a dissenting opinion, joined by Justices Clarence Thomas and Neil Gorsuch.[1]

    Opinion

    In the court's majority opinion, Justice Elena Kagan wrote:[1]

    “ In Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 349 (1924), this Court approved the “well settled” patent-law doctrine of “assignor estoppel.” That doctrine, rooted in an idea of fair dealing, limits an inventor’s ability to assign a patent to another for value and later contend in litigation that the patent is invalid. The question presented here is whether to discard this century-old form of estoppel. Continuing to see value in the doctrine, we decline to do so. But in upholding assignor estoppel, we clarify that it reaches only so far as the equitable principle long understood to lie at its core. The doctrine applies when, but only when, the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.


    ... This Court recognized assignor estoppel a century ago, and we reaffirm that judgment today. But as the Court recognized from the beginning, the doctrine is not limitless. Its boundaries reflect its equitable basis: to prevent an assignor from warranting one thing and later alleging another. Assignor estoppel applies when an invalidity defense in an infringement suit conflicts with an explicit or implicit representation made in assigning patent rights. But absent that kind of inconsistency, an invalidity defense raises no concern of fair dealing—so assignor estoppel has no place.

    For these reasons, we vacate the judgment of the Federal Circuit and remand the case for further proceedings consistent with this opinion.[5]

    		”
    —Justice Elena Kagan

    Dissenting opinion

    Justice Alito

    Justice Samuel Alito filed a dissenting opinion.

    In his dissent, Justice Alito wrote:[1]

    “ We granted review in this case to decide whether the doctrine of assignor estoppel bars petitioner from challenging the validity of a patent indirectly assigned to respondents, and I do not see how we can answer that question without deciding whether Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342 (1924), which recognized assignor estoppel, should be overruled. Both the majority and the principal dissent go to great lengths to avoid that question, but in my judgment, their efforts are unsuccessful. ...


    ... In sum, I do not think we can decide the question that the petition in this case presents unless we decide whether Westinghouse should be overruled. Because the majority and the principal dissent refuse to decide whether Westinghouse should be overruled, I would dismiss the writ as improvidently granted. I therefore respectfully dissent.[5]

    		”
    —Justice Samuel Alito

    Justice Barrett

    Justice Amy Coney Barrett filed a dissenting opinion, joined by Justices Clarence Thomas and Neil Gorsuch.

    In her dissent, Justice Barrett wrote:[1]

    “ The Patent Act of 1952 sets forth a comprehensive scheme for the creation and protection of patent rights. But it nowhere mentions the equitable doctrine of assignor estoppel, which precludes inventors who file patent applications from later saying that the patent is invalid. To the contrary, where the Act does address invalidity defenses, it states that invalidity “shall” be a defense “in any action involving the validity or infringement of a patent.” 35 U.S.C. §282(b). The text includes no exception for actions in which the inventor is the defendant.


    So why the doctrine of assignor estoppel? Because in Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342 (1924), we interpreted a predecessor statute, the Patent Act of 1870, to incorporate the doctrine. The question before us is whether the doctrine carried over into the Patent Act of 1952. That could have happened in one of two ways: (1) if Congress ratified Westinghouse when it reenacted the assignment provision in 1952, or (2) if assignor estoppel was part of the well-settled common-law backdrop against which Congress legislated in 1952. The Court opts for the second theory, but in my view, neither works. ...

    ... Respondents insist that assignor estoppel promotes fair dealing, while petitioner protests that the supposedly equitable doctrine is actually inequitable in practice. If we had authority to develop federal common law on the subject, we could take sides in that debate. But no one contends that we do. This case turns on whether the Patent Act of 1952 incorporates the doctrine, and because it does not, I respectfully dissent.[5]

    		”
    —Justice Amy Coney Barrett

    Text of the opinion

    Read the full opinion here.

    October term 2020-2021

    See also: Supreme Court cases, October term 2020-2021

    The Supreme Court began hearing cases for the term on October 5, 2020. The court's yearly term begins on the first Monday in October and lasts until the first Monday in October the following year. The court generally releases the majority of its decisions in mid-June.[8]

    The court issued 67 opinions during its 2020-2021 term. Two cases were decided in one consolidated opinion. Ten cases were decided without argument. Click here for more information on the court's opinions.

    The court agreed to hear 62 cases during its 2020-2021 term. Of those, 12 were originally scheduled for the 2019-2020 term but were delayed due to the coronavirus pandemic. Five cases were removed from the argument calendar.


    See also

    External links

    Footnotes

    1. ↑ 1.0 1.1 1.2 1.3 1.4 U.S. Supreme Court, Minerva Surgical Inc. v. Hologic Inc., decided June 29, 2021
    2. ↑ 2.0 2.1 Supreme Court of the United States, "Minerva Surgical Inc. v. Hologic Inc.: Questions presented," accessed January 9, 2021
    3. ↑ 3.0 3.1 3.2 3.3 3.4 3.5 3.6 3.7 3.8 3.9 U.S. Court of Appeals for the Federal Circuit, Hologic, Inc. v. Minerva Surgical, Inc., decided April 22, 2020
    4. ↑ Cornell Law School Legal Information Institute, "Patent," accessed January 12, 2021
    5. ↑ 5.0 5.1 5.2 5.3 5.4 Note: This text is quoted verbatim from the original source. Any inconsistencies are attributable to the original source.
    6. ↑ Supreme Court of the United States, "Oral Argument - Audio," accessed April 22, 2021
    7. ↑ Supreme Court of the United States, "Oral Argument - Transcript," accessed April 22, 2021
    8. ↑ SupremeCourt.gov, "A Brief Overview of the Supreme Court," accessed April 20, 2015
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