Kramer Levin Files Merits Stage Amicus Brief in US Supreme Court on Behalf of NYIPLA

On Feb. 25, Kramer Levin filed a merits stage amicus brief in the Supreme Court of the United States on behalf of the New York Intellectual Property Law Association in Minerva Surgical Inc. v. Hologic, Inc., et al., No. 20-440. The case concerns assignor estoppel, a judicially created equitable doctrine intended to ensure good faith and fair dealing in patent assignments.  Assignor estoppel prevents patent assignors who are later accused of infringing the patent they assigned from contesting its validity. The Supreme Court has explained that it can be difficult to define what was assigned, particularly when the assignment is made before the grant of a patent, and that patent claims pursued by the assignee and allowed may include more than the assignor actually assigned. The Federal Circuit, by contrast, applies assignor estoppel as a per se rule, regardless of the facts of the case and what was invented and conveyed. NYIPLA’s brief urges the Court to overturn the Federal Circuit’s per se application of estoppel in favor of an equitable approach. The NYIPLA advocates for a case-by-case determination as to whether estoppel applies, with a true balancing of the equities and consideration as to what was assigned and what ultimately issued and is being asserted against the assignor. Consistent with the historical origins of the doctrine, such an approach promotes fair dealing in patent transactions and fairness to both assignees and assignors. The full brief can be downloaded here.