Doctrinal “dinosaur” or stare decisis? Justices wrestle with patent-law precedent.

Claud Mccoid

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The justices explored possible approaches to restrict the doctrine of patent assignor estoppel for the duration of oral argument in Minerva Surgical Inc. v. Hologic Inc. on Wednesday.

The doctrine works like this. An inventor data files a patent application on an invention and assigns the patent legal rights to an assignee — perhaps in exchange for cash from the assignee, or perhaps as element of a contract with the inventor’s employer. Just after a patent troubles, the assignee contends that the inventor has infringed the patent. In the patent-infringement lawsuit, the inventor desires to argue that the patent is invalid. The doctrine of assignor estoppel bars the inventor from complicated validity. It stems from fears that every assignment of patent legal rights requires implicit representations about patentability, and the inventor must not be ready to contradict these representations and undermine the price of the assigned patent legal rights.… Read More