In Hologic, Inc. v. Minerva Surgical, Inc. (Fed. Cir. April 22, 2020), the Federal Circuit declined the “invitation to ‘abandon the doctrine’ of assignor estoppel” and, after concluding that the district court did not abuse its discretion in applying the doctrine, affirmed the district court’s grant of summary judgment of no invalidity. Opinion at 16, 18.
The relevant facts are as follows. Csaba Truckai assigned his interest in the application to which the patent-in-suit claims priority (as well as all continuation applications) to NovaCept, Inc., a company that he co-founded. NovaCept was acquired by, and the patent rights were subsequently assigned to, Cytyc Corporation. Cytyc was later acquired by Hologic. Mr. Truckai eventually left NovaCept and founded Minerva, the accused infringer in this case. After Mr. Truckai’s departure from NovaCept, a continuation of the application Mr. Truckai had assigned to NovaCept was filed. The continuation application issued as the patent that is currently asserted by Hologic against Minerva. Minerva argued that Hologic broadened the claims after Mr. Truckai assigned the application and that the asserted claim is invalid for lack of enablement and failure to provide adequate written description.