BarbriSFCourseDetails
  1. keyboard_arrow_leftBack

Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, July 8, 2021

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide patent counsel on patent invalidation and assignor estoppel. The panel will discuss the courts' and PTAB's approaches to assignors in patent invalidation and recent decisions, and whether and how the Supreme Court’s Minerva decision affects the doctrine going forward. The panel will also discuss considerations for contract provisions (for both assignee and assignor) and for dealing with assignors and patent invalidation.

Faculty

Eric J. Fues
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Fues represents clients in domestic and international technology disputes, including patent and trade secret litigation at trial and appellate levels. He has been involved in more than 50 district court matters and U.S. International Trade Commission investigations. He has broad experience in all aspects of litigation, including examining witnesses at trial; taking and defending depositions; and arguing matters in court. While his cases have involved a wide array of technologies, he has primarily focused on the fields of specialty chemicals, pharmaceuticals, semiconductors, LEDs, digital imaging, and vehicle navigation systems. He previously worked as a semiconductor engineer at Texas Instruments. He advises clients regarding patent licensing issues, pre-litigation due diligence, and patent enforcement strategies.

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio
Erik R. Puknys
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Puknys is consistently recognized for his work as a leading patent litigator. He has represented both plaintiffs and defendants in district courts around the U.S, in the Federal Circuit Court of Appeals, and in the U.S. Supreme Court. He has worked for startups and Fortune 100 companies in a wide variety of technical fields, including software, telecommunications, computer hardware, semiconductors, medical diagnostics, medical devices, and pharmaceuticals.

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio
Megan L. Meyers
Attorney
Finnegan Henderson Farabow Garrett & Dunner LLP

Ms. Meyers focuses on patent litigation, specifically Abbreviated New Drug Application (ANDA) matters at the district court level and in appeals to the U.S. Court of Appeals for the Federal Circuit, as well as patent prosecution and client counseling. She has experience representing pharmaceutical patent holders in ANDA and 505(b)(2) application litigations arising under the Hatch-Waxman Act. She has technical experience in the biomedical field, including technologies such as prosthetic limbs and orthotic devices.

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio
Jeanette M. Roorda
Attorney
Finnegan Henderson Farabow Garrett & Dunner LLP

Ms. Roorda focuses her practice on complex patent litigation related to the pharmaceutical and chemical fields. She participates in litigation proceedings at the district court level and in appeals to the Federal Circuit. She has experience representing pharmaceutical patent holders in Abbreviated New Drug Application (ANDA) and 505(b)(2) Application litigations arising under the Hatch-Waxman Act.


Her litigation experience covers the several stages of litigation. At the district court level, she assists with pre-litigation tasks, including patent analysis, jurisdiction analysis, jurisdiction support identification, ANDA paragraph IV notice letter analysis, legal and scientific issue research, and complaint drafting. She participates in the initiation of proceedings by working with local counsel in multiple jurisdictions to file complaints and supporting documents. She assists in trial preparation. She assists with preparation for, defending, and taking fact and expert witness depositions, and provides litigation support during trial. She also conducts post-trial tasks, including post-trial brief drafting.

expand_circle_down Expand to View Full Bio expand_circle_up Collapse Bio

Description

The doctrine of assignor estoppel precludes inventors who have assigned their patent rights from challenging the validity of the patent. The Federal Circuit had broadly and strictly applied the doctrine, finding that it not only barred attacks that were known to the inventor at the time of the assignment, but it also barred attacks based on invalidity defenses that were unknown—and unknowable—when the assignment was executed. In contrast, the PTAB has decided not to apply the doctrine in inter partes review proceedings, for example in IPR2015-00978, and the Federal Circuit upheld that decision in Arista Networks, Inc. v. Cisco Sys., 908 F.3d 792 (Fed. Cir. 2018). See also, Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., IPR2013-00290, Paper 18 (P.T.A.B. Oct. 25, 2013) (precedential).

In January 2021, the U.S. Supreme Court agreed to consider the viability of the doctrine in court challenges in Minerva Surgical v. Hologic, Inc., (U.S. Jan. 8, 2021). Oral arguments were heard in April 2021 to answer the question: “May a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, have a defense of invalidity heard on the merits?” At the district court and Federal Circuit levels, the answer was “no.” See Hologic, Inc. v. Minerva Surgical, Inc., 325 F. Supp. 3d 507 (D. Del. June 28, 2018) and Hologic, Inc. v. Minerva Surgical, Inc., 957 F.3d 1256 (Fed. Cir. 2020). The Supreme Court issued a 5-4 decision on June 29, 2021. The majority upheld the doctrine of assignor estoppel but explained that “the doctrine is not limitless. Its boundaries reflect its equitable basis: to prevent an assignor from warranting one thing and later alleging another. Assignor estoppel applies when an invalidity defense in an infringement suit conflicts with an explicit or implicit representation made in assigning patent rights.” Minerva Surgical v. Hologic, Inc., 594 U.S. ___ at 17 (2021). On remand, the Supreme Court has directed the Federal Circuit to determine whether the new claim, which issued after the assignment of the patent rights, is materially broader than the claims that were assigned.

Listen as our authoritative panel of patent attorneys examines the doctrine, how it has evolved in the courts, and why the PTAB has decided not to recognize it. The panel will also explain whether and how the Supreme Court’s Minerva decision affects the doctrine going forward. The panel will discuss considerations for contract provisions (for both assignee and assignor) and dealing with assignors and patent invalidation challenges.

Outline

  1. Assignor estoppel in the courts vs. at the PTAB
  2. The Supreme Court’s narrowed holding
  3. Considerations for contract provisions

Benefits

The panel will review these and other priority issues:

  • What role can an assignor play to invalidate a patent?
  • How have the courts treated the issue of assignor estoppel?
  • How did the Supreme Court’s majority and dissents address the issues?
  • How will courts implement the Supreme Court’s holding?
  • What does assignor estoppel mean for patent sale agreements? Or assignment agreements?