No. 20-440
Minerva Surgical, Inc. v. Hologic, Inc., et al.
Tags: 35-usc-282 assignor-estoppel due-process judicial-doctrine patent patent-infringement patent-invalidity patent-law statutory-interpretation
Latest Conference:
2021-01-08
(distributed 2 times)
Question Presented (from Petition)
In the Patent Act, Congress established that invalidity is a "defense[] in any action involving the validity or infringement of a patent." 35 U.S.C. § 282(b) (emphasis added). There is no textual exception to this command. The Federal Circuit nonetheless applies a judge-made "equitable" exception to the statute's unqualified language known as "assignor estoppel." Assignor estoppel prevents an inventor who has assigned a patent from later contesting the patent's validity.
The question is 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.
Question Presented (AI Summary)
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
Docket Entries
2021-08-02
JUDGMENT ISSUED.
2021-06-29
Judgment VACATED and case REMANDED. Kagan, J., delivered the opinion of the Court, in which Roberts, C. J., and Breyer, Sotomayor, and Kavanaugh, JJ., joined. Alito, J., filed a dissenting opinion. Barrett, J., filed a dissenting opinion, in which Thomas and Gorsuch, JJ., joined.
2021-04-21
Argued. For petitioner: Robert N. Hochman, Chicago, Ill. For United States, as amicus curiae: Morgan L. Ratner, Assistant to the Solicitor General, Department of Justice, Washington, D. C. For respondents: Matthew M. Wolf, Washington, D. C.
2021-04-07
Reply of petitioner Minerva Surgical, Inc. filed. (Distributed)
2021-04-05
Motion of the Acting Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument GRANTED.
2021-03-31
Brief amicus curiae of United Therapeutics Corp. filed. (Distributed)
2021-03-31
Brief amicus curiae of Pharmaceutical Research and Manufacturers of America filed. (Distributed)
2021-03-31
Brief amici curiae of Leading Technology Composites, Inc. and Clarkwestern Dietrich Building Systems LLC filed. (Distributed)
2021-03-30
CIRCULATED
2021-03-26
Motion of the Acting Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument filed.
2021-03-24
Brief of respondents Hologic, Inc., et al. filed.
2021-03-15
Record requested.
2021-03-12
SET FOR ARGUMENT on Wednesday, April 21, 2021.
2021-03-01
Brief amicus curiae of Intellectual Property Owners Association filed in support of neither party.
2021-03-01
Brief amicus curiae of New York City Bar Association in support of neither party filed.
2021-03-01
Brief amicus curiae of United States in support of neither party filed.
2021-03-01
Brief amicus curiae of American Intellectual Property Law Association filed in support of neither party.
2021-03-01
Brief amici curiae of Intellectual Property Law Professors filed.
2021-02-26
Brief amicus curiae of Engine Advocacy filed.
2021-02-25
Brief amicus curiae of New York Intellectual Property Law Association in support of neither party filed.
2021-02-22
Blanket Consent filed by Petitioner, Minerva Surgical, Inc.
2021-02-22
Joint appendix volumes 1 and 2 with supplemental appendix filed. (Statement of costs filed)
2021-02-22
Brief of petitioner Minerva Surgical, Inc. filed.
2021-01-08
Petition GRANTED.
2020-12-09
DISTRIBUTED for Conference of 1/8/2021.
2020-11-24
Reply of petitioner Minerva Surgical, Inc. filed.
2020-11-24
Rescheduled.
2020-11-24
DISTRIBUTED for Conference of 12/11/2020.
2020-11-05
Brief amicus curiae of Engine Advocacy filed.
2020-11-05
Brief amici curiae of Intellectual Property Professors filed.
2020-11-05
Brief of respondents Hologic, Inc., et al. in opposition filed.
2020-10-14
Blanket Consent filed by Petitioner, Minerva Surgical, Inc.
2020-09-30
Petition for a writ of certiorari filed. (Response due November 5, 2020)
Attorneys
American Intellectual Property Law Association
Richard Thomas Matthews — Williams Mullen, Amicus
Engine Advocacy
Hologic, Inc., et al.
Matthew McManus Wolf — Arnold & Porter LLP, Respondent
Intellectual Property Law Professors
Intellectual Property Owners Association
Robert M. Isackson — Leason Ellis LLP, Amicus
Intellectual Property Professors
Mark A. Lemley — Amicus
Leading Technology Composites, Inc. and Clarkwestern Dietrich Building Systems LLC
Daniel Roy Ortiz — Amicus
Minerva Surgical, Inc.
Robert N. Hochman — Sidley Austin, LLP, Petitioner
New York City Bar Association
New York Intellectual Property Law Association.
Pharmaceutical Research and Manufacturers of America
United States
United Therapeutics Corp.