`In the Supreme Court of the United States
`No. 20-___
`HOLOGIC, INC. AND CYTYC SURGICAL PRODUCTS, LLC,
`CROSS-PETITIONERS,
`v.
`MINERVA SURGICAL, INC., CROSS-RESPONDENT.
`ON PETITION FOR A WRIT OF CERTIORARI TO THE
`UNITED STATES COURT OF APPEALS FOR THE
`FEDERAL CIRCUIT
`CROSS-PETITION FOR A WRIT OF
`CERTIORARI
`MATTHEW M. WOLF
`Counsel of Record
`MARC A. COHN
`JENNIFER A. SKLENAR
`R. STANTON JONES
`WILLIAM C. PERDUE
`SEAN A. MIRSKI
`ARNOLD & PORTER
`KAYE SCHOLER LLP
`601 Massachusetts Ave., NW
`Washington, DC 20001
`(202) 942-5000
`matthew.wolf@arnoldporter.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`QUESTION PRESENTED
`American courts have long relied on the doctrine of
`assignor estoppel “to prevent unfairness and injustice.”
`Diamond Sci. Co. v. Ambico, Inc., 848 F.2d 1220, 1224
`(Fed. Cir. 1988) (citation omitted). In its most basic
`form, the doctrine “prohibits an assignor of a patent, or
`one in privity with an assignor, from attacking the validi-
`ty of that patent when he is sued for infringement by the
`assignee.” MAG Aerospace Indus., Inc. v. B/E Aero-
`space, Inc., 816 F.3d 1374, 1379-80 (Fed. Cir. 2016). At
`the rule’s heart lies a straightforward intuition: “an as-
`signor should not be permitted to sell something and lat-
`er to assert that what was sold is worthless, all to the
`detriment of the assignee.” Diamond Sci., 848 F.2d at
`1224. Under the Patent Act and the America Invents Act,
`a party may challenge the validity of an issued patent not
`only in infringement litigation in district court, but also
`through administrative proceedings before the Patent
`Office. The Federal Circuit has held that the Patent Of-
`fice’s administrative finding of invalidity can give rise to
`collateral estoppel in infringement litigation in district
`court. The question presented is whether an assignor of a
`patent may circumvent the doctrine of assignor estoppel
`by challenging the validity of the assigned patent in ad-
`ministrative proceedings before the Patent Office, and
`then using the Patent Office’s finding of invalidity to col-
`laterally estop the assignee from relying on the patent in
`infringement litigation in district court.
`(I)
`
`
`
`
`
`RULE 29.6 STATEMENT
`Cross-petitioner Cytyc Surgical Products, LLC is a
`wholly owned subsidiary of cross-petitioner Hologic, Inc.
`The Vanguard Group, Inc. and T. Rowe Price Associates,
`Inc. each own more than ten percent of the stock of
`cross-petitioner Hologic, Inc.
`
`
`
`
`(II)
`
`
`
`
`RELATED PROCEEDINGS
`This case is directly related to Minerva Surgical,
`Inc. v. Hologic, Inc. et al., No. 20-440 (pet’n for cert. filed
`Sept. 30, 2020). Other proceedings that are not directly
`related to this case but involve 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.).
`
`
`
`
`
`(III)
`
`
`
`
`
`TABLE OF CONTENTS
`Introduction ............................................................................. 1
`Opinions Below ........................................................................ 4
`Page
`Jurisdiction .............................................................................. 4
`Statement Of The Case .......................................................... 5
`A. Factual Background ................................................. 5
`B. Proceedings Below ................................................... 7
`Reasons the Cross-Petition Should Be Granted ............. 13
`I. The Divergent Treatment of Assignor Estoppel
`in District Court and Administrative
`Proceedings Is an Issue of Exceptional
`Importance ..................................................................... 15
`A. The Federal Circuit’s Treatment of Assignor
`Estoppel Is Internally Inconsistent and
`Illogical ..................................................................... 15
`B. The Decision Below Will Have Far-Reaching
`Consequences .......................................................... 18
`II. The Federal Circuit’s Approach To Assignor
`Estoppel Is Wrong ........................................................ 21
`A. The America Invents Act Did Not Abrogate
`Assignor Estoppel in IPR Proceedings .............. 21
`B. The Federal Circuit Erred in Allowing
`Assignors to Use IPR Proceedings to
`Circumvent Assignor Estoppel in District
`Court 25
`III. This Cross-Petition Is an Ideal Vehicle .................... 27
`Conclusion .............................................................................. 30
`
`
`
`(IV)
`
`
`
`
`
`
`TABLE OF AUTHORITIES
` Page(s)
`Cases
`Arista Networks, Inc. v. Cisco Sys., Inc.,
`908 F.3d 792 (Fed. Cir. 2018) ...................... passim
`Astoria Fed. Sav. & Loan Ass’n v. Solimino,
`501 U.S. 104 (1991) ............................ 16, 21, 22, 23
`B & B Hardware, Inc. v. Hargis Indus., Inc.,
`575 U.S. 138 (2015) ........................................ 22, 25
`Blonder-Tongue Labs., Inc. v. Univ. of Ill.
`Found.,
`402 U.S. 313 (1971) .................................. 25, 26, 27
`Briscoe v. LaHue,
`460 U.S. 325 (1983) .............................................. 24
`Diamond Sci. Co. v. Ambico, Inc.,
`848 F.2d 1220 (Fed. Cir. 1988) ...................... 11, 16
`Hologic, Inc. v. Minerva Surgical, Inc.,
`764 F. App’x 873 (Fed. Cir. 2019) .......................... 7
`Hologic, Inc. v. Minerva Surgical, Inc.,
`957 F.3d 1256 (Fed. Cir. 2020) .............................. 4
`Hologic, Inc. v. Minerva Surgical, Inc.,
`No. 1:15-cv-01031,
`2016 WL 3143824 (D. Del. June 2, 2016) ...... 5, 6, 7
`Hopkins v. Lee,
`19 U.S. 109 (1821) ................................................ 22
`(V)
`
`
`
`
`VI
`Impression Prods., Inc. v. Lexmark Int’l,
`Inc.,
`137 S. Ct. 1523 (2017) .................................... 22, 23
`Isbrandtsen Co. v. Johnson,
`343 U.S. 779 (1952) .............................................. 24
`Kirtsaeng v. John Wiley & Sons, Inc.,
`568 U.S. 519 (2013) .............................................. 22
`Lear, Inc. v. Adkins,
`395 U.S. 653 (1969) .............................................. 11
`MAG Aerospace Indus., Inc. v. B/E
`Aerospace, Inc.,
`816 F.3d 1374 (Fed. Cir. 2016) ............................ 15
`Mentor Graphics Corp. v. EVE-USA, Inc.,
`851 F.3d 1275 (Fed. Cir. 2017) ...................... 15, 16
`Mentor Graphics Corp. v. EVE-USA, Inc.,
`870 F.3d 1298 (Fed. Cir. 2017) ............................ 16
`Mentor Graphics Corp. v. Quickturn Design
`Sys., Inc.,
`150 F.3d 1374 (Fed. Cir. 1998) ........................ 1, 17
`Oil States Energy Servs., LLC v. Greene’s
`Energy Grp., LLC,
`138 S. Ct. 1365 (2018) .......................................... 25
`Pandrol USA, LP v. Airboss Ry. Prods., Inc.,
`424 F.3d 1161 (Fed. Cir. 2005) ...................... 15, 26
`Parklane Hosiery Co. v. Shore,
`439 U.S. 322 (1979) .............................................. 27
`
`
`
`
`
`
`VII
`Scott Paper Co. v. Marcalus Mfg. Co.,
`326 U.S. 249 (1945) .............................................. 22
`Tenney v. Brandhove,
`341 U.S. 367 (1951) .............................................. 24
`United States v. Texas,
`507 U.S. 529 (1993) ........................................ 23, 24
`Westinghouse Elec. & Mfg. Co. v. Formica
`Insulation Co.,
`266 U.S. 342 (1924) .......................................... 1, 23
`XY, LLC v. Trans Ova Genetics,
`890 F.3d 1282 (Fed. Cir. 2018) ............................ 17
` Statutes
`28 U.S.C.
`§ 1254(1) ................................................................. 4
`35 U.S.C.
`§ 102........................................................................ 8
`§ 103........................................................................ 8
`§ 112.................................................................... 8, 9
`§ 120........................................................................ 5
`§ 302...................................................................... 19
`§ 311(a) ........................................................... 16, 24
`§ 316(e) ................................................................. 24
`§ 321...................................................................... 19
`America Invents Act, Pub. L. No. 112-29,
`§ 18, 125 Stat. 284 (2011) .................................... 19
`
`
`
`
`
`
`VIII
`Other Authorities
`David R. Bauer & Gregory R. Baden, Patent
`Buyers Beware—Former Owner of a
`Patent Can Challenge Its Validity in an
`Inter Partes Review, 29 Intell. Prop. &
`Tech. L.J. 3 (2017) ................................................ 20
`Mark J. Feldstein et al., How IPRs Became
`Key Tools in Patent Disputes, Fed. Law.,
`May/June 2019 ............................................... 19, 20
`Amber L. Hatfield, Note, Life After Death
`for Assignor Estoppel: Per Se Application
`to Protect Incentives to Innovate, 68 Tex.
`L. Rev. 251 (1989) ................................................ 22
`Mark A. Lemley, Rethinking Assignor
`Estoppel, 54 Hous. L. Rev. 513 (2016) ................. 19
`6 Moy’s Walker on Patents § 17:35 (4th ed.
`2017) ..................................................................... 22
`A. Scalia & B. Garner, Reading Law (2012) ............ 22
`Eliot D. Williams, Federal Circuit Reaffirms
`Vitality of the Assignor Estoppel
`Doctrine—Further Emphasizing the
`Importance of the PTAB, 28 Intell. Prop.
`& Tech. L.J. 13 (2016) .................................... 19, 20
`
`
`
`
`
`
`
`
`
`CROSS-PETITION FOR CERTIORARI
`INTRODUCTION
`Cases like this one do not come around very often.
`It is rare for both parties to agree that there is “a very
`real split” in need of this Court’s resolution. Pet. for
`Cert., Minerva Surgical, Inc. v. Hologic, Inc., No. 20-440
`(“Pet.”) at 1. It is rarer still to find the author of the de-
`cision below likewise calling for further review “to clarify
`[the] odd and seemingly illogical regime” created by her
`own court’s diverging precedents. Pet. App. 32a. But
`that is the case here. There can be no doubt that some-
`thing has gone badly awry in this case, and only this
`Court can fix it.
`For years, a conflict has been brewing within the
`Federal Circuit over how to apply the longstanding
`common-law doctrine of assignor estoppel in different
`forums. At its core, assignor estoppel “prevents a party
`who assigns a patent to another from later challenging
`the validity of the assigned patent.” Mentor Graphics
`Corp. v. Quickturn Design Sys., Inc., 150 F.3d 1374, 1377
`(Fed. Cir. 1998). District courts have applied that basic
`rule in infringement suits for well over a century, and
`this Court first endorsed the rule almost a hundred
`years ago. Westinghouse Elec. & Mfg. Co. v. Formica
`Insulation Co., 266 U.S. 342, 350 (1924). Recently, how-
`ever, the Federal Circuit has held that this venerable
`doctrine does not apply in the context of inter partes re-
`view (IPR), an administrative process through which pe-
`titioners can challenge the validity of an issued patent
`before the Patent Office. See Arista Networks, Inc. v.
`Cisco Sys., Inc., 908 F.3d 792, 801-04 (Fed. Cir. 2018).
`That divergence has left “the Federal Circuit’s approach
`to assignor estoppel at odds with itself,” Pet. 1, ultimate-
`ly leading to the collision in this case.
`
`
`
`
`
`
`
`2
`Cross-petitioner Hologic, Inc. sued cross-respondent
`Minerva Surgical, Inc. for infringing two of its patents,
`the ’183 Patent and the ’348 Patent. Minerva sought to
`defend itself by claiming that both patents were invalid.
`But Minerva’s founder, president, and CEO was the one
`who had sold the patent portfolio to Hologic’s predeces-
`sor in the first place. Both the district court and the
`Federal Circuit thus agreed that assignor estoppel
`barred Minerva from challenging the validity of the pa-
`tents in district court.
`Shortly after litigation began, however, Minerva
`launched a collateral attack on the validity of the two pa-
`tents through the IPR process, where the Federal Cir-
`cuit has held that assignor estoppel does not apply. The
`Patent Office declined to review the ’348 Patent but ul-
`timately held the ’183 Patent invalid. When that admin-
`istrative judgment became final, Minerva ran back to
`district court and argued that the Patent Office’s ruling
`collaterally estopped Hologic from relying on the ’183
`Patent’s validity in the infringement suit. The district
`court agreed with Minerva and estopped Hologic from
`relying on the ’183 Patent, even as Minerva remained es-
`topped from challenging the validity of the ’348 Patent.
`The Federal Circuit reluctantly affirmed.
` It
`acknowledged that Minerva had effectively “circum-
`vent[ed]” assignor estoppel by filing an IPR petition and
`then leveraging the Patent Office’s decision to collateral-
`ly estop Hologic back in district court. Pet. App. 14a.
`The court below further recognized the “seeming unfair-
`ness” of that situation and underscored the “predica-
`ment” in which Hologic found itself through no fault of
`its own. Pet. App. 14a, 15a. Judge Stoll, who wrote the
`majority opinion, lodged additional views to further la-
`ment the “unfairness” of such a “peculiar,” “odd,” and
`“seemingly illogical regime.” Pet. App. 31a-32a (Stoll, J.,
`additional views). Despite their qualms, however, Judge
`
`
`
`
`
`
`3
`Stoll and the panel considered themselves “bound” to af-
`firm the inequitable result reached by the district court
`with respect to the ’183 Patent. Pet. App. 2a.
`This Court should grant this cross-petition to
`straighten out the Federal Circuit’s divergent prece-
`dents on the doctrine of assignor estoppel in different fo-
`rums. Judge Stoll, Hologic, and Minerva all agree that
`this “dual-track system” is neither lawful nor sustaina-
`ble. Pet. 14. It cannot be that Congress intended the
`doctrine to apply in different ways in district court and in
`IPR proceedings. Congress presumptively legislates
`against the background of the common law, and there is
`no reason to think that assignor estoppel should not ap-
`ply in IPR proceedings. And even if the doctrine does
`not apply there, infringing assignors should not be al-
`lowed to circumvent assignor estoppel by using the re-
`sults of IPR proceedings to collaterally estop assignees
`in district court.
`Congress certainly never intended the consequences
`that will necessarily follow the Federal Circuit’s ruling.
`Barring this Court’s intervention, the decision below will
`eviscerate the assignor estoppel doctrine and encourage
`duplicative litigation, forum shopping, and other forms of
`gamesmanship. It will also serve as the starting gun for
`races between district courts and the Patent Office to see
`which forum can resolve parallel infringement lawsuits
`and IPR proceedings involving the same patents first.
`Minerva and Hologic have both petitioned for this
`Court’s review of the Federal Circuit’s assignor estoppel
`holdings in this case. But Minerva’s petition is clouded
`by fatal vehicle problems: it seeks review of only the
`Federal Circuit’s ruling on the ’348 Patent, which does
`not implicate the application of the assignor estoppel
`doctrine in IPR proceedings, and also raises a host of
`case-specific questions. Worse still, the Federal Circuit
`
`
`
`
`
`
`4
`has already affirmed the validity of the ’348 Patent on
`the merits, meaning Minerva is asking for an advisory
`opinion. Hologic’s cross-petition, by contrast, suffers
`from none of these defects and will enable this Court to
`analyze the doctrine of assignor estoppel’s application in
`both district courts and IPR proceedings simultaneously.
`The cross-petition should be granted.
`OPINIONS BELOW
`The Federal Circuit’s opinion is reported at 957 F.3d
`1256 and reproduced in the appendix to Minerva’s initial
`petition for a writ of certiorari at Pet. App. 1a-32a. The
`Federal Circuit’s order denying cross-petitioners’ peti-
`tion for rehearing en banc and cross-respondent’s peti-
`tion for panel rehearing and for rehearing en banc is un-
`reported and is reproduced at Pet. App. 79a-80a. The
`district court’s memorandum and order refusing to apply
`assignor estoppel to the ’183 Patent is unreported and is
`reproduced at Cross-Pet. App. 1a-23a.
`JURISDICTION
`The Federal Circuit entered judgment on April 22,
`2020, Pet. App. 1a, and denied cross-petitioners’ timely-
`filed petition
`for rehearing en banc and cross-
`respondent’s timely-filed petition for panel rehearing
`and for rehearing en banc on July 22, 2020, Pet. App.
`80a. Cross-respondent filed a petition for certiorari on
`September 30, 2020. By standing order dated March 19,
`2020, this Court extended the deadline to file any peti-
`tion for certiorari to 150 days from the date of the order
`denying a timely petition for rehearing—here, until De-
`cember 21, 2020. This Court has jurisdiction over this
`cross-petition under 28 U.S.C. § 1254(1).
`
`
`
`
`
`
`5
`STATEMENT OF THE CASE1
`A. Factual Background
`1. Csaba Truckai is the founder, President, and
`CEO of cross-respondent Minerva Surgical, Inc. Pet.
`App. 6a. Before founding Minerva, Truckai co-founded
`another company called NovaCept, Inc., which in the late
`1990s invented a medical device called the NovaSure sys-
`tem. Pet. App. 5a. NovaSure revolutionized the medical
`procedure of endometrial ablation, in which the lining of
`the uterus is ablated, or destroyed, to treat menorrhagia,
`or abnormally heavy menstrual bleeding. Pet. App. 2a.
`Compared with earlier products, NovaSure made the
`procedure considerably safer, quicker, cheaper, and
`more convenient for patients. Hologic, Inc. v. Minerva
`Surgical, Inc., No. 1:15-cv-01031, 2016 WL 3143824, at
`*2 (D. Del. June 2, 2016). NovaSure also made it easier
`for physicians to detect perforations in the uterus, which
`can allow the hot fluids generated during ablation to es-
`cape and cause serious injury. Id.; Pet. App. 2a-3a.
`Truckai filed two relevant patent applications cover-
`ing the NovaSure system and assigned his interest in
`those applications to NovaCept. Pet. App. 5a. Truckai’s
`broad assignment to NovaCept also included the rights
`to all continuation applications—that is, follow-on appli-
`cations pursuing additional patent claims based on the
`same descriptions and priority dates as the original ap-
`plications. Id.; see 35 U.S.C. § 120. Because the applica-
`tions had not yet been granted as issued patents, Truckai
`knew that the scope of the patent claims might change
`during prosecution, as occurs routinely.
`
`1 A materially identical statement of the case is included in Ho-
`logic’s brief in opposition in No. 20-440, filed simultaneously with
`this cross-petition.
`
`
`
`
`
`
`6
`2. In 2004, Truckai sold NovaCept and the No-
`vaSure system to Cytyc Corporation for $325 million.
`C.A. App. 30612. Truckai personally received approxi-
`mately $8 million from the deal. Id. As part of the
`transaction, NovaCept assigned all of its patent rights,
`including to continuation applications, to Cytyc. C.A.
`App. 36355. In 2007, cross-petitioner Hologic, Inc. ac-
`quired Cytyc. Pet. App. 5a-6a. Hologic subsequently in-
`vested approximately $140 million in making NovaSure
`the leading treatment for menorrhagia. C.A. App.
`30194-95.
`In 2005 and 2015, the U.S. Patent and Trademark
`Office issued two patents covering the NovaSure sys-
`tem—U.S. Patent No. 6,872,183 (the ’183 Patent) and
`U.S. Patent No. 9,095,348 (the ’348 Patent). The two pa-
`tents were based upon continuation applications claiming
`priority to the original applications that Truckai had as-
`signed to NovaCept and that NovaCept had later as-
`signed to Hologic’s predecessor Cytyc. Pet. App. 6a.
`3. Meanwhile, Truckai left NovaCept, and in 2008
`he founded Minerva to develop and sell a new endome-
`trial ablation system that would compete against Holog-
`ic. Id. Minerva’s product deliberately copied core fea-
`tures of NovaSure—including features covered by the
`’183 and ’348 Patents. Pet. App. 6a; C.A. App. 29004.
`Minerva assured the U.S. Food and Drug Administra-
`tion that Minerva’s device was “almost dead identical to
`NovaSure,” and it was pitched to physicians as “look[ing]
`like NovaSure” and “specifically designed to virtually
`mimic the steps of the NovaSure procedure.” C.A. App.
`36416, 31468, 36715. Peer-reviewed literature showed
`that the success rates of the two systems were
`“[e]ssentially comparable.” Transcript of Jury Trial at
`513:13, Hologic, Inc. v. Minerva Surgical, Inc., No. 1:15-
`cv-01031 (D. Del. July 17, 2018), ECF No. 508 [hereinaf-
`ter July 17 Trial Transcript]. Indeed, the similarities be-
`
`
`
`
`
`
`7
`tween NovaSure and Minerva’s system were so apparent
`that one of Minerva’s Medical Advisory Board members
`warned management that he “envision[ed] major ‘patent
`infringement’ disputes for this device vs Novasure.”
`C.A. App. 17637.
`Minerva and Hologic at one point discussed the pos-
`sibility of Hologic acquiring Minerva and the rights to its
`new device, but no deal was ever reached. Hologic, 2016
`WL 3143824, at *10.
`B. Proceedings Below
`1. In November 2015, Hologic sued Minerva, alleg-
`ing that Minerva’s ablation system infringed certain
`claims of the ’183 and ’348 Patents. Pet. App. 6a.
`Just four months later, Minerva filed two petitions
`with the Patent Trial and Appeal Board (PTAB) request-
`ing inter partes review (IPR) of the claims of the ’348
`Patent that Minerva’s ablation system infringed. C.A.
`App. 8288, 8310. One month after that, Minerva filed a
`third IPR petition seeking review of the asserted claims
`of the ’183 Patent. C.A. App. 19111. In all three peti-
`tions, Truckai’s new company (Minerva) argued that
`some of the patent rights Truckai’s old company (Nova-
`Cept) had assigned to Hologic’s predecessor were invalid
`and worthless in light of certain prior art. Pet. App. 6a.
`The PTAB denied review of the ’348 Patent, finding no
`reasonable likelihood that any of the asserted patent
`claims were invalid. Id. But the PTAB instituted review
`of the ’183 Patent. Id.
`On December 15, 2017, the PTAB issued a final writ-
`ten decision finding that the asserted claims of the ’183
`Patent were invalid. Pet. App. 6a-7a. On April 19, 2019,
`the Federal Circuit affirmed. Hologic, Inc. v. Minerva
`Surgical, Inc., 764 F. App’x 873, 881 (Fed. Cir. 2019).
`
`
`
`
`
`
`8
`2. In the meantime, back in district court, Hologic
`and Minerva cross-moved for summary judgment on the
`issues of infringement, assignor estoppel, and invalidity.
`On infringement, the district court had previously
`rejected Minerva’s overly narrow claim constructions,
`denying Minerva’s contention that a broad construction
`was inconsistent with the specification. C.A. App. 5 n.6.
`Applying its construction, the court concluded that “Mi-
`nerva’s accused product infringes the asserted claims of
`the patents.” Pet. App. 71a.
`The district court further held that assignor estop-
`pel barred Minerva from challenging the validity of the
`’183 and ’348 Patents. Minerva “d[id] not seriously dis-
`pute th[e] facts” establishing “privity between Truckai
`and Minerva.” Pet. App. 58a. And the court rejected
`Minerva’s contention that assignor estoppel does not ap-
`ply to invalidity defenses based on the written descrip-
`tion and enablement requirements imposed by 35 U.S.C.
`§ 112, as opposed to the novelty and nonobviousness re-
`quirements imposed by Sections 102 and 103. The court
`also rejected Minerva’s contention that Hologic’s sup-
`posedly “overly broad claims” tipped the equities in Mi-
`nerva’s favor. Id. The court agreed with Hologic “that—
`more than 19 years after Mr. Truckai executed his initial
`patent assignment—Minerva and Truckai [were] at-
`tempt[ing] to destroy the value of what Truckai sold to
`Hologic so that Minerva c[ould] directly compete with
`Hologic using patented technology he already sold to
`Hologic.” Pet. App. 55a. “Considering the balance of
`equities and the relationship of Minerva and Truckai,”
`the court concluded, “assignor estoppel applies.” Pet.
`App. 58a.
`In addition to applying assignor estoppel, the dis-
`trict court also held, in the alternative, that “even if Mi-
`nerva were not estopped,” Minerva’s invalidity argu-
`
`
`
`
`
`
`9
`ments failed on the merits. Pet. App. 62a. “No reasona-
`ble jury,” the court concluded, “could find that Minerva
`ha[d] met its burden of proving by clear and convincing
`evidence that the claimed [elements] are not properly
`described or enabled,” as Section 112 requires. Pet. App.
`63a. The district court then held a trial on certain of Mi-
`nerva’s state-law counterclaims, as well as on damages
`and willful infringement. During trial, Minerva argued
`that Hologic had intentionally broadened the ’348 Pa-
`tent’s claims to cover Minerva’s device after learning
`about Minerva’s technology pursuant to a non-disclosure
`agreement. C.A. App. 2220. The jury disagreed, finding
`that Hologic had not misused Minerva’s confidential in-
`formation. C.A. App. 98. The jury also awarded Hologic
`almost $4.8 million in damages for Minerva’s infringe-
`ment of Hologic’s patents. Pet. App. 8a.
`After the verdict, Hologic moved for additional dam-
`ages under both patents and for a permanent injunction
`against further infringement of the ’183 Patent. Pet.
`App. 8a-9a.2
`On May 2, 2019, the district court granted certain
`additional damages for the ’348 Patent, but denied addi-
`tional damages and an injunction for the ’183 Patent.
`Cross-Pet. App. 7a, 20a-21a. The court’s sole basis for
`denying relief for the ’183 Patent was the Federal Cir-
`cuit’s decision, issued less than two weeks earlier, affirm-
`ing the PTAB’s IPR decision finding the ’183 Patent in-
`valid. Cross-Pet. App. 7a, 20a. While the district court
`concluded that the Federal Circuit’s intervening decision
`effectively nullified the district court’s earlier assignor
`estoppel ruling as to the ’183 Patent, it did not disturb
`
`2 By that point, the ’348 Patent had expired. Pet. App. 8a.
`
`
`
`
`
`
`10
`the assignor estoppel ruling as to the ’348 Patent, on
`which the PTAB had denied review. Cross-Pet. App. 7a.
`3. Hologic and Minerva cross-appealed to the Fed-
`eral Circuit. As relevant here, Hologic challenged the
`district court’s holding allowing Minerva to circumvent
`assignor estoppel by using the IPR proceedings to attack
`the validity of the ’183 Patent. Minerva challenged the
`district court’s twin holdings (1) that assignor estoppel
`barred Minerva from disputing the validity of the ’348
`Patent and (2) that the ’348 Patent was valid regardless.
`On all three issues, the Federal Circuit affirmed.
`a. The panel first addressed the district court’s re-
`fusal to apply assignor estoppel to the ’183 Patent. Ordi-
`narily, the panel agreed, “an assignor should not be
`permitted to sell something and later to assert that what
`was sold is worthless, all to the detriment of the assign-
`ee.” Pet. App. 12a (citation omitted). But here, the panel
`was “bound” by Federal Circuit precedent holding that
`“the doctrine of assignor estoppel does not bar an as-
`signor from filing a petition for IPR.” Pet. App. 2a, 14a
`(citing Arista Networks, Inc. v. Cisco Sys., Inc., 908 F.3d
`792, 804 (Fed. Cir. 2018)). So although Minerva was “es-
`topped from challenging the validity of the ’183 patent
`claims in district court,” it was “able to challenge their
`validity in an IPR proceeding and, hence, circumvent the
`assignor estoppel doctrine.” Pet. App. 14a. The panel
`then concluded that the assignor estoppel doctrine did
`“not preclude Minerva from relying on” the PTAB’s IPR
`decision “to argue that the ’183 patent claims are void ab
`initio.” Id.
`The panel was quick to acknowledge “the seeming
`unfairness to Hologic in this situation,” and it “un-
`derst[oo]d Hologic’s predicament.” Pet. App. 14a, 15a.
`But bound by “precedent and the limits it places on the
`assignor estoppel doctrine,” the panel concluded that the
`
`
`
`
`
`
`11
`Federal Circuit’s affirmance of the PTAB’s IPR decision
`was “dispositive of the validity of the ’183 patent claims”
`in district court, even though “assignor estoppel [would]
`bar[] Minerva from challenging the patent’s validity in
`this district court case.” Pet. App. 14a-15a.
`The panel then turned to the district court’s holding
`that assignor estoppel precluded Minerva from challeng-
`ing the validity of the ’348 Patent. The panel “con-
`clude[d] that the district court did not abuse its discre-
`tion in applying assignor estoppel here.” Pet. App. 17a.
`To begin with, the panel “decline[d] Minerva’s invitation
`to abandon the doctrine of assignor estoppel entirely.”
`Id. The panel acknowledged this Court’s decision in
`Lear, Inc. v. Adkins, 395 U.S. 653 (1969), which abol-
`ished the doctrine of licensee estoppel. Pet. App. 17a.
`But Federal Circuit precedent cogently distinguishes li-
`censees from assignors. Pet. App. 12a (citing Diamond
`Sci. Co. v. Ambico, Inc., 848 F.2d 1220, 1224 (Fed. Cir.
`1988)). Assignor estoppel thus retains a vital role in the
`“prevention of unfairness and injustice.” Pet. App. 13a
`(quotation marks omitted).
`The panel then “agree[d] with the district court that
`the equities weigh in favor of [assignor estoppel’s] appli-
`cation in this case.” Pet. App. 18a. “Minerva disputed
`none of the pertinent facts below or on appeal.” Id. And
`while Minerva “emphasize[d] that Hologic, not Mr.
`Truckai, prosecuted [the relevant] claim … of the ’348
`patent,” the panel was “unpersuad[ed].” Pet. App. 19a.
`Truckai “executed a broad assignment of his patent
`rights,” including the right to continuation applications,
`knowing full well that the patent claims could “later [be]
`amended … in the application process (a very common
`occurrence in patent prosecutions), with or without the
`inventor’s assistance.” Id. (citation, quotation marks,
`and brackets omitted). So while Minerva was free to “in-
`troduce evidence of prior art to narrow the scope of” the
`
`
`
`
`
`
`12
`patent claims, the prosecution history of the ’348 Patent
`did not require the district court to balance the equities
`in Minerva’s favor. Pet. App. 20a (citation omitted).
`Finally, the panel agreed with the district court that,
`assignor estoppel aside, Minerva’s challenge to the valid-
`ity of the ’348 Patent failed on the merits. The panel
`thus “affirm[ed]” not only “the district court’s … sum-
`mary judgment that assignor estoppel bars Minerva
`from challenging the validity of the asserted ’348 patent
`claim,” but also “the district court’s summary judgment
`of no invalidity.” Pet. App. 30a-31a.
`b. Judge Stoll, who authored the panel decision,
`wrote separately “to highlight and question the peculiar
`circumstances created in this case by [the Federal Cir-
`cuit]’s precedent.” Pet. App. 31a (Stoll, J., additional
`views). That precedent produced “an odd situation
`where an assignor can circumvent the doctrine of assign-
`or estoppel by attacking the validity of a patent claim in
`the Patent Office, but cannot do the same in district
`court.” Id. She called on the full court “to clarify this
`odd and seemingly illogical regime” and to “consider en
`banc the doctrine of assignor estoppel as it applies both
`in district court and in the Patent Office.” Pet. App. 32a.
`4. Hologic petitioned for rehearing en banc, and Mi-
`nerva cross-petitioned for panel rehearing or rehearing
`en banc. Hologic sought review of the panel’s refusal to
`apply assignor estoppel to the ’183 Patent, highlighting
`the divergence in the Federal Circuit’s assignor estoppel
`precedent between district court and IPR proceedings.
`Hologic Pet. for Reh’g 3. Minerva sought review of the
`panel’s application of assignor estoppel to the ’348 Pa-
`tent, as well as a fact-bound claim construction issue.
`Minerva Pet. for Reh’g 2-3. After the Federal Circuit
`called for a response, Hologic pointed out that any fur-
`ther review of the application of assignor estoppel to the
`
`
`
`
`
`
`13
`’348 Patent would constitute an impermissible advisory
`opinion, because the panel had already affirmed the dis-
`trict court’s alternative holding that Minerva’s invalidity
`arguments failed on the merits. Hologic Resp. at 6.
`On July 22, 2020, the Federal Circuit denied both
`rehearing petitions. Pet. App. 80a.
`REASONS THE CROSS-PETITION SHOULD BE
`GRANTED
`The Court should grant this cross-petition for three
`basic reasons.
`First, this cross-petition allows the Court to recon-
`cile a serious divergence in the Federal Circuit’s prece-
`dents that all parties agree constitutes “a compelling
`reason for this Court’s review.” Pet
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
