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Wednesday, March 10, 2021
The assignor estoppel doctrine (“AED”) is an equitable doctrine based on the principle of fair dealing that prevents assignors of patent rights, and those in privity with them, from challenging the validity of the assigned rights under many circumstances. The classic fact pattern in which the AED is invoked involves an inventor/assignor assigning his or her patent rights for value and then seeking to invalidate such patent rights when sued for infringement of the assigned rights.
The Supreme Court has recognized this doctrine on a number of occasions, but each time, it has done so sparingly and has tightly constricted it.
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On January 8, 2021, the U.S. Supreme Court agreed to hear a case calling for it to abolish or limit the doctrine of assignor estoppel.
See Minerva Surgical, Inc. v. Hologic, Inc., et al., No. 20-440, 2021 WL 77248 (U.S. Jan. 8, 2021). Mintz previously discussed the Federal Circuit’s decision, which found assignor estoppel to be applicable. The Federal Circuit’s decision highlighted discrepancies that exist in the application of assignor estoppel in district court cases and proceedings before the Patent Trial and Appeal Board (PTAB). The Supreme Court’s review should help resolve this discrepancy.
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