Fresh From the Bench: Latest Federal Circuit Court Case

CASE OF THE WEEK

Hologic, Inc. v. Minerva Surgical, Inc., Appeal Nos. 2019-2054, -2081 (Fed. Cir. Aug. 11, 2022)

Our Case of the Week follows the Hologic saga as it returns to the Federal Circuit on remand from the Supreme Court’s decision vacating the prior Federal Circuit opinion in 2021. We covered that decision here. The case concerns the doctrine of assignor estoppel. In this decision on remand, the Federal Circuit concluded that assignor estoppel applied.

The dispute traces back to the early 1990s, when an inventor, Csaba Truckai, co-founded a company called NovaCept and developed an endometrial ablation devices. Mr. Truckai and his co-inventors filed a patent application in 1998. He assigned his rights to NovaCept at that time. NovaCept was acquired by Cytyc Corporation in 2004, and assigned all of its patent rights to Cytyc at the time. As part of the agreement, it warranted the validity of the patents and further warranted it had “no present knowledge from which it could reasonably conclude” that the assigned intellectual property rights were invalid. Cytyc was acquired by Hologic in 2007, and is the current assignee of that patents at issue.