- ITC Cases Mean No Agency Patent Review for Nintendo, SK Innovation – Applying the NHK-Fintiv factors, the Patent Trial and Review Board refused to review Nintendo’s challenge to a video game controller patent.
- Supreme Court Will Review Doctrine of Assignor Estoppel – The Supreme Court granted certiorari last Friday in Minerva Surgical Inc. v. Hologic Inc., on appeal from the Federal Circuit. The case asks the justices to resolve 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.
Here’s the latest.
ITC Cases Mean No Agency Patent Review for Nintendo, SK Innovation
The Patent Trial and Review Board denied review of Nintendo’s challenge to a video game patent due to the company’s current battle with Gamevice Inc. at the U.S. International Trade Commission. As Matthew Bultman discusses, the PTAB reached this decision using the NHK-Fintiv analysis, which sets forth factors that the board should weigh when considering whether to review a patent that is at issue in a parallel proceeding.
The “Fintiv analysis, which concerns parallel district court litigation, does not (and should not) apply with equal force to parallel ITC proceedings without accounting for the significantly different legal impact of an Article III court and the ITC, an agency whose jurisdiction and expertise in patent matters is clearly not the same as that of the Board,” SK Innovation wrote in a December filing.
The ITC is expected to conclude its investigation in August.
Supreme Court Will Review Doctrine of Assignor Estoppel
The Supreme Court granted certiorari last Friday in Minerva Surgical Inc. v. Hologic Inc., on appeal from the Federal Circuit. The petition specifically asks “[w]hether 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.”
The Federal Circuit’s decision, affirming the U.S. District Court for the District of Delaware, held that assignor estoppel – the doctrine that bars a patent’s seller from attacking the patent’s validity in subsequent patent infringement litigation – did not bar the assignor from relying on a Federal Circuit decision affirming a Patent Trial and Appeal Board (PTAB) decision invalidating asserted claims in an inter partes review proceeding.
Eileen McDermott highlights Judge Kara Stoll’s short concurrence that noted the unusual situation, describing the assignor’s circumventing of the doctrine “by attacking the validity of a patent claim in a Patent Office [rather than] in district court,” as “odd.” While Judge Stoll emphasized the need to resolve this situation en banc, the Federal Circuit declined to do so, and the Supreme Court agreed Friday to step in and resolve the issue.
In the first instance, Minerva urges the Court to do away with the doctrine altogether, arguing that it “undermines, rather than serves, patent law values.” Alternatively, Minerva argues that, should the Court decline to slash the doctrine, the Court should “define [the doctrine’s] very limited contours,” borders that do not reach the present dispute.
In response, Hologic argues that destroying the doctrine would “encourage duplicative litigation, forum shopping, and other forms of gamesmanship.”
And in their opposition to Minerva’s petition, Hologic and Cytyc argue that assignor estoppel is “a simple, intuitive rule” that “precludes inventors who have assigned (i.e., sold) the rights to an invention from later challenging the validity of the rights they sold.” Granting Minerva’s request to abrogate the doctrine would represent a “revolutionary step” and eliminate “a baseline protection that this Court first endorsed almost a century ago and against which Congress has legislated.”
Briefing on the merits is expected within the next two months with argument in late March or April. A decision is expected by the end of the term in June.