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Supreme Court Upholds, but Narrows, Assignor Estoppel | Thompson Coburn LLP

Supreme Court Upholds, but Narrows, Assignor Estoppel | Thompson Coburn LLP
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Supreme Court Upholds, But Limits, Assignor Estoppel Doctrine | Burr & Forman

To embed, copy and paste the code into your website or blog: On June 29, 2021, the Supreme Court limited the doctrine of assignor estoppel that has long prevented inventors from challenging the validity of patents they have assigned to a third party.  The judicially-created doctrine is grounded in fairness and prevents a patent assignor from warranting (at least implicitly) to the buyer that the patent is valid, but then later challenging the validity of the patent. In Minerva Surgical, Inc. v. Hologic, Inc. [1], the patent claims a device to treat abnormal uterine bleeding that used a moisture-permeable applicator.  The inventor assigned the patent application for the device to his company, Novacept, Inc., which was later acquired by Hologic, Inc.  The inventor subsequently founded Minerva Surgical, Inc., where he developed and patented a similar device for treating uterine bleeding, but that used a moisture-impermeable applicator.  In the meantime, Hologic filed a continua

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