MINERVA SURGICAL, INC., v. HOLOGIC, INC., et al., Docket Nos. 20-440, amicus brief filed 3/1/2021
On March 1, 2021, AIPLA filed an amicus brief in the Supreme Court case Minerva v. Hologic (Case No. 20-440) where the issue presented was “[w]hether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.” AIPLA’s brief generally supported keeping the doctrine of assignor estoppel without supporting either party’s position, but allowing for certain exceptions consistent with the findings in Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 348 (1924). The brief distinguished assignor estoppel from the doctrine of licensee estoppel that was abolished in Lear, Inc. v. Adkins, 395 U.S. 653 (1969), and also outlined the profound risks and cloud of uncertainty around assigned patents that might occur should the Court abolish assignor estoppel.