This morning the Federal Circuit issued one precedential opinion in a patent case, one precedential opinion in a takings case, one nonprecedential opinion in a veterans case, and one nonprecedential opinion in a patent case. Here are the introductions to the opinions.
Hologic, Inc. v. Minerva Surgical, Inc. (Precedential)
These appeals require us to grapple with the doctrine of assignor estoppel, an equitable doctrine that prevents a party who assigned a patent to another from later challenging the validity of the assigned patent in district court. There are two patents-in-suit and each presents a different assignor estoppel issue. For the first patent, we consider whether the district court erred in holding that assignor estoppel does not bar the assignor from relying on our court’s affirmance of the Patent Trial and Appeal Board’s final decision invalidating the asserted patent claims in an inter partes review proceeding. For the second patent, we review the district court’s summary judgment that assignor estoppel bars the assignor from asserting invalidity of the assigned second patent in district court. Based on our precedent, which we are bound to follow, we conclude that the district court did not err in either respect.
STOLL, Circuit Judge, additional views.
I write separately to highlight and question the peculiar circumstance created in this case by this court’s precedent, which the panel is bound to follow. In Arista, we held that the judge-made doctrine of assignor estoppel does not apply in the context of an inter partes review. In other words, an assignor who sold his patent rights may file a petition for IPR challenging the validity of that patent. Arista Networks, Inc. v. Cisco Sys., Inc., 908 F.3d 792, 803– 04 (Fed. Cir. 2018). At the same time, we continue to bar assignors from challenging in district court the validity of the patents they assigned. See, e.g., Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1280–83 (Fed. Cir. 2017). Our precedent thus presents an odd situation where an assignor can circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office, but cannot do the same in district court. Do the principles underlying assignor estoppel—unfairness in allowing one who profited from the sale of the patent to attack it—apply in district court but not in Patent Office proceedings? Should we change the application of the doctrine in district court, or should we revisit our construction of the America Invents Act and reevaluate our interpretation of the statute as prohibiting the doctrine of assignor estoppel?
Given the odd circumstance created in this case, I suggest that it is time for this court to consider en banc the doctrine of assignor estoppel as it applies both in district court and in the Patent Office. We should seek to clarify this odd and seemingly illogical regime in which an assignor cannot present any invalidity defenses in district court but can present a limited set of invalidity grounds in an IPR proceeding.
Gadsden Industrial Park, LLC v. United States (Precedential)
This appeal and cross-appeal concern an alleged taking by the U.S. Environmental Protection Agency (EPA) from Gadsden Industrial Park (GIP) of certain steelmaking material located on a parcel of real property in Gadsden, Alabama. GIP appeals the trial court’s just compensation awards, arguing that they should be increased. The Government appeals the trial court’s conclusion that GIP had a cognizable property interest in certain material the EPA recovered from the parcel. For the reasons set forth below, we affirm-in-part, reverse-in-part, and vacate-inpart.
Carpenter v. Wilkie (Nonprecedential)
Cecil Carpenter appeals from a decision of the Court of Appeals for Veterans Claims (“the Veterans Court”) denying service connection. See Carpenter v. Wilkie, No. 18- 2404, 2019 WL 2305860 (Vet. App. May 31, 2019) (“Decision”). Because Carpenter raises only factual issues over which we lack jurisdiction, we dismiss the appeal.
Digital Ally, Inc. v. Taser International, Inc. (Nonprecedential)
Digital Ally, Inc. (“Digital”) appeals the final judgment of the United States District Court for the District of Kansas granting summary judgment of non-infringement of U.S. Patent No. 9,253,452 (the “’452 patent”). See Digital Ally, Inc. v. Taser Int’l, Inc., No. 2:16-cv-02032-CM (D. Kan. June 17, 2019), amended by No. 2:16-cv-02032-CM (D. Kan. July 25, 2019) (“District Court Decision”). We affirm.