No. 20-
`
`
`
`IN THE
`
`Supreme Court of the United States
`
`___________
`
`MINERVA SURGICAL, INC.,
`
`v.
`
`Petitioner,
`
`HOLOGIC, INC., CYTYC SURGICAL PRODUCTS, LLC,
`
`___________
`
`Respondents.
`
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`___________
`
`PETITION FOR A WRIT OF CERTIORARI
`___________
`
`
`ROBERT N. HOCHMAN*
`VERA M. ELSON
`WILSON SONSINI GOODRICH CAROLINE A. WONG
` & ROSATI, P.C.
`One South Dearborn
`650 Page Mill Road
`Chicago, IL 60603
`Palo Alto, CA 94304
`(312) 853-7000
`(650) 493-9300
`rhochman@sidley.com
`
`JILLIAN SHERIDAN
`EDWARD G. POPLAWSKI
` STONECIPHER
`OLIVIA M. KIM
`WILSON SONSINI GOODRICH SIDLEY AUSTIN LLP
`1501 K Street, N.W.
` & ROSATI, P.C.
`Washington, D.C. 20005
`633 West Fifth Street
`(202) 736-8000
`Suite 1550
`
`Los Angeles, CA 90071
`
`(323) 210-2900
`
`Counsel for Petitioner
`
`September 30, 2020
`
` * Counsel of Record
`
`
`
`
`
`
`
`IN THE
`
`Supreme Court of the United States
`
`___________
`
`MINERVA SURGICAL, INC.,
`
`v.
`
`Petitioner,
`
`HOLOGIC, INC., CYTYC SURGICAL PRODUCTS, LLC,
`
`___________
`
`Respondents.
`
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Federal Circuit
`___________
`
`PETITION FOR A WRIT OF CERTIORARI
`___________
`
`
`ROBERT N. HOCHMAN*
`VERA M. ELSON
`WILSON SONSINI GOODRICH CAROLINE A. WONG
` & ROSATI, P.C.
`One South Dearborn
`650 Page Mill Road
`Chicago, IL 60603
`Palo Alto, CA 94304
`(312) 853-7000
`(650) 493-9300
`rhochman@sidley.com
`
`JILLIAN SHERIDAN
`EDWARD G. POPLAWSKI
` STONECIPHER
`OLIVIA M. KIM
`WILSON SONSINI GOODRICH SIDLEY AUSTIN LLP
`1501 K Street, N.W.
` & ROSATI, P.C.
`Washington, D.C. 20005
`633 West Fifth Street
`(202) 736-8000
`Suite 1550
`
`Los Angeles, CA 90071
`
`(323) 210-2900
`
`Counsel for Petitioner
`
`September 30, 2020
`
` * Counsel of Record
`
`
`
`
`
`
`
`QUESTION PRESENTED
`
`In the Patent Act, Congress established that invalid-
`ity is a “defense[] in any action involving the validity
`or infringement of a patent.” 35 U.S.C. § 282(b) (em-
`phasis added). There is no textual exception to this
`command. The Federal Circuit nonetheless applies a
`judge-made “equitable” exception to the statute’s un-
`qualified language known as “assignor estoppel.” As-
`signor 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 in-
`fringement action who assigned the patent, or is in
`privity with an assignor of the patent, may have a de-
`fense of invalidity heard on the merits.
`
`(i)
`
`
`
`ii
`
`PARTIES TO THE PROCEEDING AND RULE
`29.6 STATEMENT
`
`Petitioner Minerva Surgical, Inc. (“Minerva”) has no
`parent corporation. Boston Scientific Corporation, a
`publicly traded company, holds 10 percent of
`Minerva’s stock. No other publicly held company owns
`10 percent or more of Minerva’s stock.
`
`Respondents are Hologic, Inc. and Cytyc Surgical
`Products, LLC.
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`RELATED PROCEEDINGS
`
`There are no proceedings directly related to this case
`within the meaning of Rule 14.1(b)(iii). Other proceed-
`ings that are not directly related to this case but in-
`volve the same parties are:
`
`Minerva Surgical, Inc. v. Hologic, Inc. et al., No.
`1:18-cv-00217-JFB-SRF (D. Del.);
`
`Hologic, Inc. et al. v. Minerva Surgical, Inc., No.
`1:20-cv-00925-JFB-SRF (D. Del.).
`
`
`
`
`
`
`
`
`
`iv
`
`TABLE OF CONTENTS
`
`Page
`
`QUESTION PRESENTED ...................................
`
`i
`
`PARTIES TO THE PROCEEDING AND RULE
`29.6 STATEMENT ............................................
`
`RELATED PROCEEDINGS.................................
`
`TABLE OF AUTHORITIES .................................
`
`PETITION FOR A WRIT OF CERTIORARI .......
`
`OPINIONS BELOW .............................................
`
`JURISDICTION....................................................
`
`STATUTORY PROVISIONS ................................
`
`STATEMENT OF THE CASE ..............................
`
`ii
`
`iii
`
`vi
`
`1
`
`5
`
`5
`
`5
`
`6
`
`REASONS FOR GRANTING THE PETITION .... 14
`I. ASSIGNOR ESTOPPEL IS CONTRARY TO
`THE PATENT ACT’S TEXT AND THE
`PURPOSES OF PATENT LAW .................... 15
`II. ASSIGNOR ESTOPPEL PRESENTS THE
`PATENT LAW EQUIVALENT OF A SPLIT
`OF AUTHORITY THAT REQUIRES THIS
`COURT’S INTERVENTION ......................... 23
`III. THIS CASE PRESENTS AN IDEAL VEHI-
`CLE FOR THIS COURT TO ADDRESS AS-
`SIGNOR ESTOPPEL .................................... 28
`
`CONCLUSION ....................................................
`
`
`
`
`32
`
`
`
`
`
`
`
`v
`
`TABLE OF CONTENTS—continued
`
`Page
`
`APPENDICES
`
`APPENDIX A: Opinion, Hologic, Inc. v. Minerva
`Surgical, Inc., 957 F.3d 1256 (Fed. Cir.
`2020) .............................................................. 1a
`
`APPENDIX B: Memorandum Opinion, Hologic,
`Inc. v. Minerva Surgical, Inc., 325 F. Supp.
`3d 507 (D. Del. 2018), aff’d, 957 F.3d 1256
`(Fed. Cir. 2020) ............................................. 33a
`
`for
`APPENDIX C: Order Denying Petitions
`Panel Rehearing and Rehearing En Banc,
`Hologic, Inc. v. Minerva Surgical, Inc., Nos.
`2019-2054, 2019-2081 (Fed. Cir. July 22,
`2020), ECF No. 72 ......................................... 79a
`
`
`
`
`
`
`
`
`
`
`
`vi
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page
`
`AbbVie Deutschland GmbH & Co., KG v.
`Janssen Biotech, Inc., 759 F.3d 1285 (Fed.
`Cir. 2014) .................................................... 22
`Ariad Pharm., Inc. v. Eli Lilly & Co., 598
`F.3d 1336 (Fed. Cir. 2010) ......................... 30
`Arista Networks, Inc. v. Cisco Sys., Inc., 908
`F.3d 792 (Fed. Cir. 2018) ..................... 1, 26, 27
`Bilski v. Kappos, 561 U.S. 593 (2010) .......... 1, 16
`Blonder-Tongue Labs., Inc. v. Univ. of Ill.
`Found., 402 U.S. 313 (1971) ...................... 3, 17
`Carroll Touch, Inc. v. Electro Mech. Sys.,
`Inc., 15 F.3d 1573 (Fed. Cir. 1993) ............ 21
`Coastal Dynamics Corp. v. Symbolic Displays,
`Inc., 469 F.2d 79 (9th Cir. 1972) ................ 2, 26
`Diamond Sci. Co. v. Ambico, Inc., 848 F.2d
`1220 (Fed. Cir. 1988) ............................ 3, 21, 26
`Edward Katzinger Co. v. Chi. Metallic Mfg.
`Co., 329 U.S. 394 (1947) ..................... 2, 17, 18
`Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S.
`Ct. 1923 (2016) ........................................... 16
`Interconnect Planning Corp. v. Feil, 543 F.
`Supp. 610 (S.D.N.Y. 1982) .........................
`Kimble v. Marvel Entm’t, LLC, 135 S. Ct.
`2401 (2015) ................................................. 3, 17
`Lear, Inc. v. Adkins, 395 U.S. 653
`(1969) .............................................. 1, 17, 24, 26
`Liebel-Flarsheim Co. v. Medrad, Inc., 481
`F.3d 1371 (Fed. Cir. 2007) ......................... 30
`MacGregor v. Westinghouse Elec. & Mfg. Co.,
`329 U.S. 402 (1947) .................................... 18
`MAG Aerospace
`Indus.,
`Inc. v. B/E
`Aerospace, Inc., 816 F.3d 1374 (Fed. Cir.
`2016) ........................................................... 21
`
`2
`
`
`
`
`
`vii
`
`TABLE OF AUTHORITIES—continued
`
`2
`
`Page
`Marvacon Indus., Inc. v. Thermacon Indus.,
`Inc., No. 79/1121, 1980 WL 30274 (D.N.J.
`May 28, 1980) .............................................
`Mentor Graphics Corp. v. EVE-USA, Inc.,
`870 F.3d 1298 (Fed. Cir. 2017) .................. 2, 28
`Mercoid Corp. v. Mid-Continent Inv. Co., 320
`U.S. 661 (1944) ......................................... 21, 25
`Nat’l Recovery Techs., Inc. v. Magnetic Sepa-
`ration Sys., Inc., 166 F.3d 1190 (Fed. Cir.
`1999) ........................................................... 22
`O’Reilly v. Morse, 56 U.S. (15 How.) 62
`(1854) ........................................................ 21, 22
`Octane Fitness, LLC v. ICON Health &
`Fitness, Inc., 572 U.S. 545 (2014) .............. 16
`Pope Mfg. Co. v. Gormully, 144 U.S. 224
`(1892) .......................................................... 17
`SCA Hygiene Prods. Aktiebolag v. First
`Quality Baby Prods., LLC, 137 S. Ct. 954
`(2017) .......................................................... 16
`Scott Paper Co. v. Marcalus Mfg. Co., 326
`U.S. 249 (1945) ................................... 18, 20, 21
`Shamrock Techs., Inc. v. Med. Sterilization,
`Inc., 903 F.2d 789 (Fed. Cir. 1990) ............ 21
`Trs. of Bos. Univ. v. Everlight Elecs. Co., 896
`F.3d 1357 (Fed. Cir. 2018) ......................... 30
`United States v. Dubilier Condenser Corp.,
`289 U.S. 178 (1933), amended, 289 U.S.
`706 (1933) ................................................... 16
`Westinghouse Elec. & Mfg. Co. v. Formica
`Insulation
`Co.,
`266 U.S.
`342
`(1924) ............................................ 18, 19, 20, 23
`
`
`STATUTES
`
`35 U.S.C. § 112(a) .......................................... 6, 30
`
`
`
`
`
`viii
`
`TABLE OF AUTHORITIES—continued
`
`Page
`35 U.S.C. § 282(b) .................................. 1, 5, 6, 15
`
`SCHOLARLY AUTHORITIES
`
`T. Randolph Beard et al., Quantifying the
`Cost of Substandard Patents: Some Pre-
`liminary Evidence, 12 Yale J.L. & Tech.
`240 (2010) ................................................... 24
`Lara J. Hodgson, Assignor Estoppel: Fairness
`at What Price?, 20 Santa Clara Computer
`& High Tech. L.J. 797 (2004) ............. 24, 27, 28
`Mark A. Lemley, Rethinking Assignor
`Estoppel, 54 Hous. L. Rev. 513
`(2016) .................................. 3, 19, 20, 21, 24, 28
`
`
`
`
`
`
`
`
`
`PETITION FOR A WRIT OF CERTIORARI
`
`The Patent Act makes invalidity a defense in “any
`action” for patent infringement. 35 U.S.C. § 282(b). Yet
`the Federal Circuit has decided that invalidity is not a
`defense in a patent infringement action brought
`against an inventor who previously assigned the pa-
`tent or those in privity with the assignor of the patent.
`This judge-made doctrine, known as “assignor estop-
`pel,” is contrary to the Act’s clear text and to this
`Court’s repeated command that courts “should not
`read into the patent laws limitations and conditions
`which the legislature has not expressed.” Bilski v.
`Kappos, 561 U.S. 593, 602–04 (2010). Assignor estop-
`pel undermines, rather than serves, patent law values.
`Nonetheless, the Federal Circuit not only has contin-
`ued to apply this textually groundless doctrine, it has
`expanded it at every opportunity.
`
`The doctrine’s persistence in the Federal Circuit can-
`not mask its controversial status. Indeed, despite the
`fact that the Federal Circuit’s exclusive jurisdiction in
`patent-law cases prevents patent-law issues from pre-
`senting traditional “circuit splits,” there is a very real
`split of authority regarding assignor estoppel. The
`Federal Circuit recently ruled that assignor estoppel
`does not bar an assignor (or those in privity with an
`assignor) from challenging the validity of a patent in
`an inter partes review proceeding. Arista Networks,
`Inc. v. Cisco Sys., Inc., 908 F.3d 792, 803–04 (Fed. Cir.
`2018). As Judge Stoll remarked in this case, that
`leaves the Federal Circuit’s approach to assignor es-
`toppel at odds with itself. Pet. App. 31a‒32a. Moreo-
`ver, decades ago, in Lear, Inc. v. Adkins, 395 U.S. 653
`(1969), this Court rejected assignor estoppel’s cousin,
`licensee estoppel (which bars a licensee of a patent
`from challenging the patent’s invalidity). After that
`
`
`
`
`
`2
`
`ruling, which occurred before the Federal Circuit was
`created, the Ninth Circuit and numerous district
`courts observed that Lear signaled the end of assignor
`estoppel as well. Coastal Dynamics Corp. v. Symbolic
`Displays, Inc., 469 F.2d 79, 79 (9th Cir. 1972) (per cu-
`riam); see, e.g., Interconnect Planning Corp. v. Feil,
`543 F. Supp. 610, 613 (S.D.N.Y. 1982); Marvacon In-
`dus., Inc. v. Thermacon Indus., Inc., No. 79/1121, 1980
`WL 30274, at *4–5 (D.N.J. May 28, 1980). Federal Cir-
`cuit judges have remarked that they believe the doc-
`trine merits reconsideration, but have taken the view
`that the Federal Circuit is powerless to eliminate the
`doctrine under this Court’s precedents. See Mentor
`Graphics Corp. v. EVE-USA, Inc., 870 F.3d 1298, 1305
`(Fed. Cir. 2017) (Moore, J., concurring in denial of
`panel rehearing). There is no reason to believe the Fed-
`eral Circuit will, on its own, revisit assignor estoppel.
`This Court’s review is necessary.
`
`Assignor estoppel has no more of a place in district
`court litigation than it does in inter partes reviews. In
`addition to being contrary to the Patent Act’s text, it
`undermines the patent law’s crucial public purposes.
`Assignor estoppel singles out a class of individuals—
`inventors, who are likely well positioned to expose a
`patent’s flaws or highlight the way an assignee has as-
`serted a patent beyond its legitimate scope—and bars
`them from challenging validity. The result is that bad
`patents stand and frustrate legitimate competition.
`This Court has long “emphasiz[ed] the necessity of pro-
`tecting our competitive economy by keeping open the
`way for interested persons to challenge the validity of
`patents which might be shown to be invalid.” Edward
`Katzinger Co. v. Chi. Metallic Mfg. Co., 329 U.S. 394,
`400–01 (1947). Invalidity challenges thus serve not
`only private interests, but those of the public as well.
`Id. To protect the public interest in eliminating bad
`
`
`
`
`
`
`
`3
`
`patents, this Court has time and again “remov[ed] . . .
`restrictions on those who would challenge the validity
`of patents.” Blonder-Tongue Labs., Inc. v. Univ. of Ill.
`Found., 402 U.S. 313, 344–45 & n.42 (1971) (collecting
`cases); see also Kimble v. Marvel Entm’t, LLC, 135 S.
`Ct. 2401, 2407 (2015). Assignor estoppel should be the
`next such restriction to fall.
`
`Even if this Court declines to eliminate assignor es-
`toppel entirely, it should still accept review to define
`its very limited contours. According to the Federal Cir-
`cuit, the doctrine is intended to prevent “unfairness
`and injustice” by barring someone who “assigned the
`patent rights to another for valuable consideration . . .
`from defending patent infringement claims by proving
`that what he assigned was worthless.” Diamond Sci.
`Co. v. Ambico, Inc., 848 F.2d 1220, 1224, 1226 (Fed.
`Cir. 1988). Even if that were a legitimate basis to read
`a limitation into the unqualified text of the Patent Act,
`that rationale would provide no basis for the ways the
`Federal Circuit has expanded the doctrine. See Mark
`A. Lemley, Rethinking Assignor Estoppel, 54 Hous. L.
`Rev. 513, 519–24 (2016).
`
`This case provides a perfect vehicle for considering
`whether to abandon or limit assignor estoppel. The
`Federal Circuit expanded assignor estoppel in this
`case to bar petitioner Minerva from raising invalidity
`defenses that arose only because the ultimate assignee
`of the patent rights, respondent Hologic, had broad-
`ened the scope of the patent beyond anything the in-
`ventor had claimed. Minerva’s invalidity defense was
`based solely on Section 112’s written description and
`enablement requirements. The Federal Circuit had
`never before applied assignor estoppel to that kind of
`invalidity defense, and there is no reason why it
`should. The defense does not assert that what the in-
`ventor “assigned was worthless.” Rather, the defense
`
`
`
`
`
`
`
`4
`
`was based on the fact that more than ten years after
`the inventor assigned the patent, Hologic learned that
`the inventor had developed wholly new technology
`that could compete with and outperform Hologic’s
`product embodying the assigned patent. So Hologic
`took the old assigned patent specification, drafted and
`prosecuted a new patent claim broader than what the
`inventor had claimed or assigned, and wielded that
`claim against Minerva. Minerva’s invalidity defense
`did not assert that what the inventor had originally
`assigned many years earlier lacked value. Hologic has
`obtained value from those patents for years. Minerva
`asserted only that Hologic’s expansion of what the in-
`ventor had assigned was an improper attempt to
`widen Hologic’s patent monopoly. Barring Minerva
`from presenting that defense advances no patent pol-
`icy, and frustrates the goal of preventing bad patents
`from impeding legitimate competition.
`
`Two years ago, this Court called for the views of the
`Solicitor General in a case asking this Court to review
`the Federal Circuit’s assignor estoppel law. EVE-USA,
`Inc. v. Mentor Graphics Corp., 138 S. Ct. 1608 (Apr.
`23, 2018) (No. 17-804). That case settled prior to this
`Court’s disposition of the petition. This Court’s review
`of the Federal Circuit’s ever-expanding judge-made as-
`signor estoppel rule, contrary to the Patent Act, is now
`clearly needed. It is time for this Court to declare that
`assignor estoppel is dead. At a minimum, the Court
`should constrain the doctrine. When, as here, the as-
`signee seeks to bar a challenge based on written de-
`scription and enablement to an assignee’s expansion of
`a patent after assignment, assignor estoppel should
`not apply.
`
`
`
`
`
`
`
`5
`
`OPINIONS BELOW
`
`The Federal Circuit’s opinion is reported, 957 F.3d
`1256, and is reproduced at Pet. App. 1a‒32a. The un-
`reported order denying the petition for rehearing and
`rehearing en banc is reproduced at Pet. App. 79a‒80a.
`The district court’s grant of summary judgment on as-
`signor estoppel is reported, 325 F. Supp. 3d 507, and is
`reproduced at Pet. App. 33a–78a.
`
`JURISDICTION
`
`The Federal Circuit entered its judgment on April
`22, 2020, Pet. App. 1a, and denied a timely-filed peti-
`tion for rehearing and rehearing en banc on July 22,
`2020, Pet. App. 80a. This Court has jurisdiction over
`this petition pursuant to 28 U.S.C. § 1254(1).
`
`STATUTORY PROVISIONS
`
`35 U.S.C. § 282(b) provides:
`
`(b) Defenses.—The following shall be defenses in
`any action involving the validity or infringement
`of a patent and shall be pleaded:
`
`(1) Noninfringement, absence of liability for in-
`fringement or unenforceability.
`
`(2) Invalidity of the patent or any claim in suit
`on any ground specified in part II as a condition
`for patentability.
`
`(3) Invalidity of the patent or any claim in suit
`for failure to comply with—
`
`(A) any requirement of section 112, except
`that the failure to disclose the best mode shall
`not be a basis on which any claim of a patent
`may be canceled or held invalid or otherwise
`unenforceable; or
`
`
`
`
`
`
`
`6
`
`(B) any requirement of section 251.
`
`(4) Any other fact or act made a defense by this
`title.
`
`35 U.S.C. § 282(b).
`
`35 U.S.C. § 112(a) provides:
`
`The specification shall contain a written descrip-
`tion of the invention, and of the manner and pro-
`cess of making and using it, in such full, clear,
`concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with
`which it is most nearly connected, to make and
`use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of
`carrying out the invention.
`
`35 U.S.C. § 112(a).
`
`STATEMENT OF THE CASE
`1. In the 1990s, Csaba Truckai invented a medical
`device for treating a common and serious medical
`problem: Abnormal Uterine Bleeding, or AUB. One
`treatment option for AUB is a procedure called endo-
`metrial ablation. The procedure ablates (i.e., destroys)
`the endometrial lining of the uterus with the goal of
`stopping or at least significantly reducing bleeding.
`Truckai’s device was designed for use in endometrial
`ablations.
`
`Truckai filed a provisional patent application relat-
`ing to his invention in 1998. The key to his innova-
`tion—as claimed in the patent and as described in its
`title, abstract, summary, and every embodiment—was
`that the device’s applicator head was moisture-perme-
`able and designed to transport moisture out of the pa-
`tient’s uterine cavity during the ablation treatment.
`
`
`
`
`
`
`
`7
`
`As the patent specification explains, moisture re-
`tained at the ablation site posed problems during the
`ablation procedure for previous endometrial ablation
`methods. Heating tissue to ablate it causes the tissue
`to release moisture. Early endometrial ablation de-
`vices created an extremely conductive liquid layer
`which could cause uncontrolled ablation well beyond
`the intended depth. Steam could also build up and
`force itself into surrounding tissue, causing embolism
`or unintended burning. Truckai’s invention solved
`these problems “[b]y shunting moisture away from the
`ablation site and thus preventing liquid build-up.” The
`moisture transport feature cannot function if the de-
`vice’s applicator head is not moisture permeable.
`
`The patent’s title is “Moisture Transport System for
`Contact Electrocoagulation.” Its abstract states that
`the apparatus includes a “fabric electrode array which
`is substantially absorbent and/or permeable to mois-
`ture” and that “[t]he moisture permeability and/or ab-
`sorbency of the electrode carrying member allows the
`moisture to leave the ablation site.” The summary ex-
`plains that the “present invention . . . includes a fluid
`permeable elastic member” and “[d]uring use, . . .
`moisture generated during dehydration is actively or
`passively drawn into the array and away from the tis-
`sue.”
`
`Truckai prosecuted a family of patents from his
`“Moisture Transport” specification, all of which in-
`cluded language in the patent claims expressly limited
`to moisture-permeable applicator heads. Truckai as-
`signed those patents in 1998, along with the right to
`continuation patents, to Novacept, a company he
`founded. Novacept went on to develop and obtain FDA
`approval for a device embodying the patents in 2001,
`two years after Truckai had ceased any day-to-day op-
`eration of the company.
`
`
`
`
`
`
`
`8
`
`Novacept was acquired by Cytyc Corporation in 2004
`and Hologic acquired Cytyc Corporation more than
`three years later. Hologic has for many years and still
`today sells a device which embodies these patents. The
`device has generated billions of dollars in revenue for
`Hologic.
`
`In 2008, a decade after Truckai assigned his mois-
`ture transport patents to Novacept, he invented a new
`device which creates and uses plasma—never before
`used in this context—as the heat source in endometrial
`ablation. Unlike his prior invention, this device’s ap-
`plicator head is and must be impermeable to moisture.
`Indeed, it is designed to use moisture retained at the
`ablation site to achieve significantly better outcomes
`for patients. Truckai assigned the patent for this de-
`vice to Minerva, a company he founded. It took years
`of experimentation to get the mechanism to work and
`to obtain FDA approval for the new device. Minerva
`finally obtained FDA approval in July 2015, years af-
`ter Truckai had resigned from the company.
`
`The applicator head on Minerva’s new device is a
`sealed, highly engineered silicone balloon filled with
`argon gas. When ionized with radio-frequency power,
`the gas turns into plasma that heats the silicone mem-
`brane. The applicator head must be impermeable to
`liquid because if it were not, the reaction necessary to
`generate heat inside the silicone balloon would fail.
`The plasma heats the silicone membrane from the in-
`side, and thermal energy then ablates the surrounding
`tissue. The plasma in the applicator head does not ap-
`ply constant energy across all uterine tissue at once.
`Instead, plasma filaments jump around the applicator
`head, drawn to the most conductive—which turns out
`to be the least ablated—areas of the tissue. This fo-
`
`
`
`
`
`
`
`9
`
`cused energy allows the new device to provide a gen-
`tler and more uniform ablation using as little as a
`quarter of the energy used by Hologic’s device.
`
`The lower power level and the electrical parameters
`with which it is delivered produces a much smaller
`amount of steam during ablation—not enough to cause
`the uncontrolled thermal ablation that had plagued
`earlier ablation devices. In addition, because the appli-
`cator head is impermeable to liquid, the moisture re-
`leased from the tissue during the ablation is retained
`at the ablation site and is heated by the applicator
`head. That retained, heated fluid improves tissue ab-
`lation because the endometrium, the tissue that lines
`the uterine cavity, is not smooth and flat. It is com-
`posed of millions of tiny folds of tissue. The heated
`moisture is able to reach and ablate the lining of those
`otherwise inaccessible folds.
`
`The FDA-approved success rate for Truckai’s new
`device is 93%, far higher than the FDA-approved suc-
`cess rate for Hologic’s device of 77.7%. It completely
`stops bleeding 73% of the time, twice as often as Ho-
`logic’s device.
`
`In 2013, Truckai obtained U.S. patents covering this
`latest innovation. Truckai disclosed to the patent office
`his prior patents, now owned by Hologic, as prior art.
`
`Truckai hoped that Hologic—which had dominated
`the market for a decade using Truckai’s prior inven-
`tion—would invest in, or acquire, his new innovation.
`To that end, Minerva disclosed the new device to Ho-
`logic in the context of ongoing acquisition discussions.
`But instead of investing in or acquiring Truckai’s new
`invention, Hologic filed a patent application in 2013.
`This was a continuation application that used the
`same
`“Moisture Transport”
`specification
`from
`Truckai’s old, long-ago assigned patents. As noted
`
`
`
`
`
`
`
`10
`
`above, those patents all specifically limited their
`claims to a moisture permeable applicator head. And
`the specification describes an applicator head that is
`moisture permeable as essential to the invention in all
`of its title, abstract, summary, and every embodiment.
`Nonetheless, Hologic sought and received from the pa-
`tent office a patent claim which did not describe the
`applicator head as moisture permeable. That patent,
`U.S. Patent No. 9,095,348 (“the ’348 patent”), issued in
`August 2015, and it included a claim that said nothing
`about the applicator head being either moisture per-
`meable or impermeable. This was the first time a pa-
`tent issued from Truckai’s more than 15-year-old spec-
`ification claiming an applicator head without explicit
`permeability-related limitations.
`2. Armed with its newly expanded patent claim, Ho-
`logic rushed to court. It sued Minerva (which produces
`Truckai’s new device) in November 2015, accusing
`Truckai’s new device of infringing the ’348 patent.
`
`Among other defenses, Minerva asserted that the
`’348 patent is invalid. Minerva pressed this challenge
`after the district court agreed with Hologic that the
`’348 patent’s new broad language must be construed to
`broadly cover devices with either moisture permeable
`or impermeable applicator heads.
`
`Minerva’s invalidity arguments arose from Hologic’s
`broadening of the patent claim to cover devices with a
`moisture impermeable applicator head. Minerva as-
`serted that the ’348 patent was invalid for lack of ena-
`blement and lack of written description because
`Truckai’s 15-year-old specification neither describes a
`non-permeable applicator head nor teaches how to use
`a non-permeable applicator head without causing pre-
`cisely the problems that the specification says the pa-
`tent was designed to solve. In fact, Minerva argued,
`
`
`
`
`
`
`
`11
`
`the ’348 patent could not describe or enable such a de-
`vice, because, as Truckai was well aware, no such de-
`vice had been invented when he wrote the ’348 patent’s
`specification.
`
`Hologic responded with, among other things, as-
`signor estoppel. According to Hologic, Minerva could
`not argue that the ’348 patent is invalid because Mi-
`nerva was in privity with Truckai, and no party in
`privity with Truckai could challenge the validity of any
`patent obtained from Truckai’s 1990s specification.
`
`The district court agreed with Hologic and concluded
`that assignor estoppel barred Minerva from asserting
`invalidity of the ’348 patent. Pet. App. 58a, 63a. The
`district court also considered the invalidity arguments
`in the alternative. It concluded that Minerva’s argu-
`ments failed as a matter of law, though it identified no
`disclosure in the specification of a moisture imperme-
`able applicator head, no explanation in the specifica-
`tion that a device with a moisture impermeable appli-
`cator head could solve the problems of moisture build-
`up at the ablation site, and it offered no explanation
`for how a device with a moisture impermeable applica-
`tor could incorporate a “moisture transport system,” as
`the patent is titled. Id. at 62a–64a. The district court
`simply treated its claim construction ruling, which
`read the patent’s claims broadly to cover moisture im-
`permeable applicator heads, as foreclosing Minerva’s
`invalidity argument. Id. at 58a, 63a. But nothing in
`the Court’s reasons for construing the claims broadly
`undermined much less contradicted Minerva’s invalid-
`ity arguments. Ultimately, the district court went on
`to find that Minerva infringed the ’348 patent as a
`matter of law. Id. at 71a–74a.
`3. Minerva appealed, urging the Federal Circuit to
`abandon assignor estoppel and arguing that, even if
`assignor estoppel were retained, the doctrine should
`
`
`
`
`
`12
`
`not apply here. The rationale for the doctrine was to
`prevent assignors from later asserting that what they
`had assigned was worthless. But Minerva never as-
`serted that what Truckai assigned was worthless. It
`was instead challenging the assignee’s (Hologic’s) later
`unsupported expansion of the scope of the patent
`claims.
`
`The Federal Circuit affirmed the district court’s rul-
`ing that assignor estoppel prevented Minerva from as-
`serting any invalidity defenses. Pet. App. 17a–20a.
`The Federal Circuit recognized that when this Court
`has addressed assignor estoppel it has done so to
`“carve[] out exceptions to the general assignor estoppel
`doctrine,” but it concluded that this Court “did not
`abolish the doctrine.” Id. at 11a. The Federal Circuit
`reaffirmed “the continued vitality of the doctrine of as-
`signor estoppel after Lear.” Id. at 17a (quoting Mentor
`Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1283
`(Fed. Cir. 2017)). The Federal Circuit asserted that
`there is an “important distinction . . . between assign-
`ors and licensees” because, unlike a licensee, who
`“might be forced to continue to pay for a potentially
`invalid patent, the assignor who would challenge the
`patent has already been fully paid for the patent
`rights.” Id. at 12a (quoting Diamond Sci., 848 F.2d at
`1224).
`
`The Federal Circuit parroted its prior reasoning that
`“it is the implicit representation by the assignor that
`the patent rights that he is assigning (presumably for
`value) are not worthless that sets the assignor apart
`from the rest of the world and can deprive him of the
`ability to challenge later the validity of the patent.”
`Pet. App. 12a–13a (quoting Diamond Sci., 848 F.2d at
`1224). Yet the Federal Circuit did not deny that Mi-
`nerva’s invalidity arguments—against Hologic’s over-
`broad patent claim obtained in 2015—did not call into
`
`
`
`
`
`
`
`13
`
`question any “implicit representation” by Truckai in
`1998 that what he was assigning then had value. The
`Federal Circuit did not even consider whether any
`such “implicit representation” could or should bar the
`specific invalidity challenge Minerva raised here.
`
`According to the Federal Circuit, Minerva could
`challenge Hologic’s broadening of the patent’s claims
`after assignment, but only by “introduc[ing] evidence
`of prior art to narrow the scope of” the claim “so as to
`bring [Minerva’s] accused product ‘outside the scope
`of’” the claim. Pet. App. 20a (quoting Diamond Sci.,
`848 F.2d at 1226). But Minerva’s argument was not
`that prior art should narrow the scope of Hologic’s
`broad patent. Minerva maintained that Hologic imper-
`missibly broadened the patent many years after
`Truckai’s assignment.
`
`Having ruled that Minerva’s invalidity arguments
`were barred by assignor estoppel, the Federal Circuit
`refused to consider Minerva’s invalidity arguments.
`The infringement judgment and millions of dollars in
`damages stood even though no court had ever ex-
`plained how the ’348 patent could validly cover a de-
`vice that uses an impermeable applicator head, when
`that patent’s specification repeatedly and without fail
`describes and requires a moisture permeable applica-
`tor head to work.
`
`Judge Stoll wrote separately to encourage the Fed-
`eral Circuit “to consider en banc the doctrine of as-
`signor estoppel.” Pet. App. 32a. Judge Stoll noted that
`the Federal Circuit had created an “odd and seemingly
`illogical regime in which an assignor cannot present
`any invalidity defenses in district court but can pre-
`sent a limited set of invalidity grounds in an IPR pro-
`ceeding.” Id. at 31a–32a (citing Arista Networks, Inc.,
`908 F.3d at 803–04). “In Arista,” the Federal Circuit
`
`
`
`
`
`
`
`14
`
`“held that the judge-made doctrine of assignor estop-
`pel does not apply in the context of an inter partes re-
`view.” Id. at 31a. But “[a]t the same time,” the court
`“continue[s] to bar assignors from challenging in dis-
`trict court the validity of the patents they assigned.”
`Id.
`
`Minerva timely petitioned for rehearing and rehear-
`ing en banc. After receiving a response to the petition,
`the Federal Circuit denied it on July 22, 2020. Pet.
`App. 80a.
`
`REASONS FOR GRANTING THE PETITION
`
`Assignor estoppel finds no support in the statute,
`this Court’s decisions, or the policies the Patent Act
`serves. The doctrine presents as close to a traditional
`“split of authority” requiring this Court’s intervention
`as a patent law issue can present. And this case pre-
`sents an ideal vehicle to examine the doctrine and ei-
`ther abandon it entirely or tightly constrain its appli-
`cat
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
