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Minerva Surgical, Inc. v. Hologic, Inc., et al.

Paid petition · United States Court of Appeals for the Federal Circuit, No. 2019-2054, 2019-2081 · judgment April 22, 2020

Decided · June 29, 2021
Pre-decision estimate: 2% cert probability

Before the decision, well below the 4.1% base rate, with no standout signals pointing toward a grant.

Question presented

In the Patent Act, Congress established that invalidity is a “defense[] in any action involving the validity or infringement of a patent.” 35 U.S.C. § 282(b) (emphasis added). There is no textual exception to this command. The Federal Circuit nonetheless applies a judge-made “equitable” exception to the statute’s unqualified language known as “assignor estoppel.” Assignor estoppel prevents an inventor who has assigned a patent from later contesting the patent’s validity. The question is 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.

Counsel of record

For petitioner
Robert N. Hochman
Sidley Austin, LLP

For respondent
Matthew McManus Wolf
Arnold & Porter Kaye Scholer LLP

Case

Conference history
Distributed for 2 conferences

Amicus briefs
2 cert-stage · 10 merits
(7 supporting pet./neither, 3 respondent)

Argument & decision

Argued April 21, 2021 — Robert N. Hochman · Morgan L. Ratner · Matthew M. Wolf. Audio and transcript

Decided June 29, 2021. Opinion by Kagan.

Proceedings

  1. Aug 02 2021
    JUDGMENT ISSUED.
  2. Jun 29 2021
    Judgment VACATED and case REMANDED. Kagan, J., delivered the opinion of the Court, in which Roberts, C. J., and Breyer, Sotomayor, and Kavanaugh, JJ., joined. Alito, J., filed a dissenting opinion. Barrett, J., filed a dissenting opinion, in which Thomas and Gorsuch, JJ., joined.
  3. Apr 21 2021
    Argued. For petitioner: Robert N. Hochman, Chicago, Ill. For United States, as amicus curiae: Morgan L. Ratner, Assistant to the Solicitor General, Department of Justice, Washington, D. C. For respondents: Matthew M. Wolf, Washington, D. C.
  4. Apr 07 2021
    Reply of petitioner Minerva Surgical, Inc. filed. (Distributed)
  5. Apr 05 2021
    Motion of the Acting Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument GRANTED.
  6. Mar 31 2021
    Brief amicus curiae of United Therapeutics Corp. filed. (Distributed)
  7. Mar 31 2021
    Brief amicus curiae of Pharmaceutical Research and Manufacturers of America filed. (Distributed)
  8. Mar 31 2021
    Brief amici curiae of Leading Technology Composites, Inc. and Clarkwestern Dietrich Building Systems LLC filed. (Distributed)
  9. Mar 30 2021
    CIRCULATED
  10. Mar 26 2021
    Motion of the Acting Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument filed.
  11. Mar 24 2021
    Brief of respondents Hologic, Inc., et al. filed.
  12. Mar 15 2021
    Record requested.
  13. Mar 12 2021
    SET FOR ARGUMENT on Wednesday, April 21, 2021.
  14. Mar 01 2021
    Brief amici curiae of Intellectual Property Law Professors filed.
  15. Mar 01 2021
    Brief amicus curiae of Intellectual Property Owners Association filed in support of neither party.
  16. Mar 01 2021
    Brief amicus curiae of American Intellectual Property Law Association filed in support of neither party.
  17. Mar 01 2021
    Brief amicus curiae of United States in support of neither party filed.
  18. Mar 01 2021
    Brief amicus curiae of New York City Bar Association in support of neither party filed.
  19. Feb 26 2021
    Brief amicus curiae of Engine Advocacy filed.
  20. Feb 25 2021
    Brief amicus curiae of New York Intellectual Property Law Association in support of neither party filed.
  21. Feb 22 2021
    Brief of petitioner Minerva Surgical, Inc. filed.
  22. Feb 22 2021
    Joint appendix volumes 1 and 2 with supplemental appendix filed. (Statement of costs filed)
  23. Feb 22 2021
    Blanket Consent filed by Petitioner, Minerva Surgical, Inc.
  24. Jan 08 2021
    Petition GRANTED.
  25. Dec 09 2020
    DISTRIBUTED for Conference of 1/8/2021.
  26. Nov 24 2020
    DISTRIBUTED for Conference of 12/11/2020.
  27. Nov 24 2020
    Rescheduled.
  28. Nov 24 2020
    Reply of petitioner Minerva Surgical, Inc. filed.
  29. Nov 05 2020
    Brief of respondents Hologic, Inc., et al. in opposition filed.
  30. Nov 05 2020
    Brief amici curiae of Intellectual Property Professors filed.
  31. Nov 05 2020
    Brief amicus curiae of Engine Advocacy filed.
  32. Oct 14 2020
    Blanket Consent filed by Petitioner, Minerva Surgical, Inc.
  33. Sep 30 2020
    Petition for a writ of certiorari filed. (Response due November 5, 2020)