Minerva Surgical, Inc. v. Hologic, Inc.
Case Overview
The Supreme Court held 5-4 that the doctrine of assignor estoppel, which bars a patent assignor from later challenging the validity of the patent assigned, survives in modern patent law. Justice Kagan wrote for the majority, limiting the doctrine to situations where the assignment creates a direct representation that the patent is valid.
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The Facts
Csaba Truckai invented a medical device used in gynecological procedures and assigned the patent to what became Hologic, Inc. Truckai later founded Minerva Surgical and developed a competing device. Hologic sued for infringement. Minerva argued in defense that the underlying patent was invalid. Hologic invoked assignor estoppel to bar Minerva and Truckai from challenging validity, arguing they could not assign what they represented to be a valid patent and then turn around and deny its validity.
The Application
Truckai, as the inventor and assignor, implicitly represented through his patent transfer to Hologic that the patent was valid, a representation on which Hologic relied when taking ownership and enforcing it against competitors. When Truckai later founded Minerva and challenged that same patent's validity as a defense to infringement, he sought to adopt a position directly inconsistent with his prior assignment, precisely the circumstance assignor estoppel addresses. The Court reaffirmed the doctrine applies in this context, where the assignor's business incentive to invalidate a patent he previously transferred creates an impermissible inconsistency, though it reserved narrow exceptions for purely formal assignments or challenges to claims added post-transfer.
The Conclusion
**The ruling preserves assignor estoppel but limits it to assignments where the inventor actually made representations of validity.** Assignors who transferred patents as a routine corporate formality, or whose later validity challenge is directed at claims added after the assignment, retain the right to challenge validity.
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