In Hologic, Inc. v. Minerva Surgical, Inc., 957 F.3d 1256 (Fed. Cir. 2020), the court upheld the doctrine of “assignor estoppel” but also found that it could be collaterally attacked via IPR since the PTO does not enforce the doctrine. The panel – led by Judge Stoll — also called for reconsideration of the doctrine “as it applies both in district court and in the Patent Office.”
The patentee in this case want the the court to broadly hold that assignor estoppel cannot be circumvented via IPR proceeding; the defendants are asking that the court go the other way and narrow assignor estoppel associated with claims added or amended after the assignment.
Pending en banc questions from the patentee:
1. Whether an assignor can circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office?
2. Whether the America Invents Act prohibits the doctrine of assignor estoppel.
The accused infringer asks the following:
1. Whether assignor estoppel applies when the assignee broadened claims after assignment.
[Note – I amended these questions to make them more readable – DC].
A group of 26 law professors led by Prof. Mark Lemley (Stanford) filed a petition in support of the en banc rehearing — arguing that the Federal Circuit has unduly expanded the doctrine of assignor estoppel. [LemleyAmicus]
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What the court needs to do here is recognize that “assignor estoppel” is the same defense as the longstanding property law doctrine of “estoppel by deed.” The two should be interpreted in parallel fashion.
I assume, Dennis, that you agree with the accused infringer that the doctrine needs to be reigned in? Because that is what would happen if you interpreted assignor estoppel consistent with common law “estoppel by deed.” Estoppel by deed basically precludes a seller of real property from denying the truth or validity of a deed (or any factual recitals in the deed) after a sale or conveyance. The doctrine is far too too simplistic to deal with the core complexity you have in the patent world, i.e., the nature and character of the conveyed “property” morphing or evolving over time based on later-filed continuations seeking broader claims that were not known to the inventor at the time of the oath. In fact, in most states, the doctrine of estoppel by deed would probably not apply if the “property” could somehow later change, because the doctrine is strictly limited to the subject matter and express recitals in the deed.
The most sensible rule would be to apply assignor estoppel only as to the content of the patent application at the time of the signing of the inventor oath, consistent with how sworn statements are dealt with in other areas of law. It seems cuckoo that an inventor could be estopped against broader claims filed many years after the oath, that the inventor never knew about or even imagined.
LR,
Tell me more about “the nature and character of the conveyed “property” morphing or evolving over time based on later-filed continuations seeking broader claims that were not known to the inventor at the time of the oath.”
You are aware that ANY broader claim MUST BE known to the inventor at the time of the oath, otherwise you violate the no new matter rule, right?
The ‘property’ at the time of filing is what it is. You might be confused about the right to later correct and (rightfully) claim the full extent (or more full extent) of what was in that original filing, but this may be something that merely reflects your (implicit) biases.
>You are aware that ANY broader claim MUST BE known to the inventor
>at the time of the oath, otherwise you violate the no new matter
>rule, right?
More technical formalism from you, anon. You’re confusing the patent specification with the issued claims. As Giles Rich once famously (or infamously) wrote, “the name of the game is the claim.” I shouldn’t have to remind you, anon, that it is the claims, not the specification, that define the metes and bounds of the property right conferred by a patent. An inventor of course has full knowledge of the “invention” as it is described in the patent specification, but that’s a far cry from having actual knowledge of every conceivable claim that someone in the future may attempt to procure based on that specification.
I reject your attempt at diversion through semantic labeling.
The point I provide is straight up. Deal with that point.
No new matter controls. Your initial point does not reach. I am confusing nothing, as I never said anything to the contrary of “the name of the game is the claim.” Rather, it is you that is being disingenuous by attempting to paint the picture that somehow, down the road, there IS something ‘new” when due to the very controlling nature of the structure of the process, this is just not so.
We are talking here about the undefined future “metes and bounds” of a patent versus the original application and alleged all-knowing of all final claims at that time. The originally filed claims are part of the specification, not “new matter,” unlike later attempted amendments of the specification or new claims that are not supported by the original specification. Nor can any lay inventor possibly envision every possible generic claim that could be allegedly based on specification examples.
Thanks LR, for adding other distinctions from “estoppel by deed” re later claim changes. Most patent rights assignments are by employed inventors and are made before and/or at the time of filing the application. For most applications the final claims differ from the originally filed claims, and thus the prior art which may be applicable, especially for the many applications filed without a prior art search. Furthermore, extensive claim amendments made by the assignee-employer’s patent attorneys are typically not controlled by, or often even seen in advance by, the assignor-inventor.
Same “no new matter” of the actual metes and bounds comment applies to you, Paul.
Maybe you share some of the same implicit biases as well…
” … the nature and character of the conveyed “property” morphing or evolving over time based on later-filed continuations seeking broader claims that were not known to the inventor at the time of the oath.”
Lode, I agree with anon here.
That the inventor (or inventor’s counsel) didn’t claim all that could have been claimed (regardless of the reason/s), shouldn’t open a back door to attacking his / her own patent/s.
Except in the case of a CIP, the content of the patent / disclosure hasn’t changed.
IPRs should not be able to weasel away what should be a bedrock principle.
“Except in the case of a CIP, the content of the patent / disclosure hasn’t changed.”
But the subject matter protected by the claims can absolutely changed.
Inventor believes that combination of “A+B+C” is novel and non-obvious. Inventor doesn’t believe “A+B” is novel and non-obvious. Original claims recite A+B+C. Inventor signs oath. Five years later, inventor is no longer with company and patent attorney changes claims to “A+B.” Inventor never believed A+B was novel. Why should inventor not be able to challenge the validity of the claims? (Inventor never represented that A+B was valid patentable material)
“Inventor doesn’t believe “A+B” is novel and non-obvious.
That is NOT what the oath at filing indicates.
You are making things up post facto.
What IS indicated by the oath is the entirety of the as-filed application.
Deal
with
it.
While I (like most people here) usually dont engage you, the basis of assignor estoppel is that the oath is an attestation to belief in a patent’s validity.
See Diamond Scientific (“When the inventor-assignor has signed the Oath, Power of Attorney and Petition, which attests to his belief in the validity of the patents, and has assigned the patent rights to another for valuable consideration, he should be es-topped from defending patent infringement claims by proving that what he assigned was worthless. “).
A patent’s validity turns on its claims. When claims change during prosecution, then it doesnt make any sense to say an oath filed prior to such claim amendments represents an attestation to validity of the resulting patent.
Patent invalidity does not turn ONLY on the claims.
If, as you assert, “it doesnt make any sense to say an oath filed prior to such claim amendments represents an attestation to validity of the resulting patent.”
then, a new oath would be required at any point of claim amendment.
The fact is that such is not needed – and it is not needed precisely because we have a no new matter rule, and the oath pertains to the ENTIRE metes and bounds of the application as filed.
You are not correct and you cannot be correct.
And sh__can the whining about “engage.” That sounds like an extremely pitiful excuse for wanting to stay in a nice warm bubble.
I agree. In fact, it may not be particularly contentious that A+B is known, but the Examiner of the amended claims was asleep at the wheel.
The inventor, who assigned the A+B+C patent to company X, now works for company Y. The patent is still pending, and company X pursues (invalid) claims to A+B.
Inventor comes up with an even better combination, A+B+Q.
I don’t see why Inventor should not be able to challenge the validity of claims directed to A+B, when such claims should not have survived prosecution in the first place because they were not novel at the time of filing the original patent.
The brief at page 6 is seriously flawed, as the oath of the inventor is directly contrary to the assertions being made there.
…overall, NOT impressed, as the brief mainly rides the pony of “0h N0es – bad patents” and completely closes its eyes to the presence and level of the GRANT of a patent in its hurry to proclaim the destruction of a patent grant to be a public good.
It’s from Lemley that means zero chance of it being anything but anti-patent.
It is always interesting to read Lemley’s writings to see the angles of how patents are being attacked.
The sad thing about Lemley is that he is all about judicial activism. He wants to weaken patents and rather than being a man and trying to get legislation what he does is labor away to erode our entire legal system through his highly questionable ethics and push for judicial activism.
He is a man of the downfall of the USA.
Lemley is only part to blame for that.
The ones DOING the judicial activism – they deserve the lion’s share of scorn.
(I will also save a heaping for attorneys who scoff at their ethical responsibilities that include NOT placing the Supreme Court above the Constitution and its checks and balances including Separation of Powers)
Re: “…“assignor estoppel” is the same defense as the longstanding property law doctrine of “estoppel by deed.” The two should be interpreted in parallel fashion.”
Why? patent validity has an important public interest stake, as the Sup. Ct. has demonstrated. Patents have, by statute, attributes of private property. They are not transferred by “deeds” and have several other important historic legal differences from real property. Such as precluding running restraints on alienation. Nor would eliminating assignor estoppel preclude using inventorship oaths and any other assignor admissions against interest against their later adverse arguments. Nor is patent inventorship the same as mere prior land ownership.
Also, as someone else pointed out, if the current patent owner paid the assignee for a patent now asserted by the assignee to be invalid, unless that assertion is based on previously unknown prior art the current patent owner might have a suit for recovering that payment?
P.S. I how many actual patent cases in recent years has assignor estoppel been applied and made a crucial difference? Especially where the assignor was the employed named inventor on the patent of the patent owner?
Paul,, I cannot agree with your assertion that patents have any type of restriction on alienation different from real property. Do you have an example in mind?
Further, I think you confuse matters slightly with the attempted tie between inventorship and a ‘prior ownership’ angle, as the aspect in patent land of “inventor” is merely that of a “first owner” of which, it is rather well established that any view of the legal rights of property of a patent necessarily are manifest first in an inventor (as it is the inventor’s inchoate rights that are transformed into the full body of legal rights).
Anon, you missed the key word “running.” That is the difference. There are several Sup. Ct. decisions against attempted restraints on alienation to run with the patent [as opposed to suits for breach of contract for the first transfer against the restraint].
Ah – thanks for pointing that out.
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