Petitions / Supreme Court Activity

This post summarizes recent activity at the Supreme Court in cases decided by the Federal Circuit.

Here are the details.

Granted Cases

There is no new activity to report.

Petition Cases

New Petitions

The Supreme Court received one new cross-petition for writ of certiorari in Hologic, Inc. v. Minvera Surgical, Inc. In its cross-petition, Hologic asked the Court to review the following question:

[W]hether an assignor of a patent may circumvent the doctrine of assignor estoppel by challenging the validity of the assigned patent in administrative proceedings before the Patent Office, and then using the Patent Office’s finding of invalidity to collaterally estop the assignee from relying on the patent in infringement litigation in district court.

New Responses

One new brief in opposition to the petition in Minerva Surgical, Inc. v. Hologic, Inc. was filed with the Court by Hologic. In its response, Hologic argues that

Courts to this day apply the doctrine of assignor estoppel regularly and without dissent. The facts of this case provide a textbook example of the doctrine’s application. . . . Minerva now asks this Court to abrogate this well-settled doctrine entirely. Respectfully, the Court should decline to take that revolutionary step. The doctrine of assignor estoppel is a core part of patent law—a baseline protection that this Court first endorsed almost a century ago and against which Congress has legislated. No judge on the Federal Circuit has questioned its continuing vitality, and no court outside the Federal Circuit has any controlling precedent rejecting it. That consensus reflects that the doctrine serves patent law’s purposes by increasing the value of patents and encouraging innovation. On inspection, Minerva’s objections to the doctrine ring hollow and case-specific.

Amicus Briefs

Two new amicus briefs were filed with the Court in Minerva Surgical, Inc. v. Hologic, Inc.

First, Engine Advocacy, a non-profit technology policy, research, and advocacy organization, filed its amicus brief in support of Minerva, arguing that

The judge-made doctrine of assignor estoppel is limited by Supreme Court precedent, and in keeping with pro-innovation law and policy both circuit and district courts eliminated the doctrine before the formation of the Federal Circuit. But assignor estoppel has strayed far from its origins and modern technology companies and employment practices have undermined assignor estoppel’s original principles. No longer a protection against bad faith assignments, assignor estoppel has morphed into a powerful tool to preserve invalid patents from scrutiny. The many harmful effects of the doctrine are felt especially acutely by startups. Startup founders and employees can be haunted by low-quality patents wielded in anti-competitive ways. . . . This problem also trickles down to reduce employee mobility and restrict productive business arrangements. Because this judge-made doctrine hurts innovation and competition, all in the name of protecting low-quality patents, assignor estoppel deserves a second look from this Court.

And second, a group of Intellectual Property Professors filed their amicus brief also in support of Minerva, contending that

The current scope of the assignor estoppel doctrine is inconsistent with the decisions of the Supreme Court. The doctrine has expanded far beyond the metes and bounds of this Court’s increasingly narrow precedent, including to cases lacking any bad faith during negotiations and to cases where not only the inventor herself but also her privies are precluded from challenging an invalid patent. The unwarranted breadth of assignor estoppel harms important public policy interests in invalidating bad patents, ensuring free competition, and promoting efficient mobility of employees. . . . This case provides the Court an opportunity to correct a series of Federal Circuit cases that have diverged greatly from Supreme Court precedent and patent policy. Amici take no position on which party should prevail in this case, but this Court should grant certiorari to eliminate the assignor estoppel doctrine altogether or to restore the doctrine to its narrow roots.

Waivers of Right to Respond

In Rutila v. Department of Transportation, the Department of Transportation filed a waiver of its right to respond to the petition, which raised a question related to the Merit Systems Protection Board.

Denied Petitions

The Supreme Court denied the petitions for writ of certiorari in two cases: (1) Personal Audio, LLC v. CBS Corp. and (2) Arctic Cat Inc. v. Bombardier Recreational Products Inc.