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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.

Mr. Truckai left NovaCept and formed Minerva in 2008, going into competition with Hologic—the assignor of his original patent application and of the resulting patent.

The relevant patent issued in 2015 following a series of continuation and divisional patent applications from Mr. Truckai’s original application.  In November 2015, Hologic sued Minerva.  Minerva alleged that the patent was invalid.  Hologic moved for summary judgment that Minerva was barred from raising any invalidity defenses based on the doctrine of assignor estoppel.  The Federal Circuit agreed, finding no abuse of discretion in applying the doctrine of assignor estoppel.  We wrote that decision up as our Case of the Week here.

The Supreme Court was unwilling to abandon the doctrine of assignor estoppel altogether, but found that it “comes with limits.”  Specifically, it “reaches only so far as the equitable principle long understood to lie at its core.”  In this case, the Supreme Court found that the doctrine should not apply if the asserted claim was “materially broader” than the ones that were assigned because, in such a case, the inventor “could not have warranted its liability in making the assignment.  And without such a prior inconsistent representation, there is no basis for estoppel.”

On remand, the Federal Circuit considered whether the claim of the asserted patent was “materially broader” than the comparable claim from the patent application.  But first the Court had to consider whether the application’s claim 31, which was canceled before the assignment to Cytyc, should even be considered, in light of the cancelation.  The Court found that claim 31 was only canceled as the result of a restriction requirement, and that Mr. Truckai reserved the right to re-file it as a divisional application.  The Court held that “a claim canceled in response to a restriction requirement thus travels with the application” and assignor estoppel could be based on canceled claim 31.

Having determined that the warranty of validity included canceled claim 31, the Court proceeded to analyze whether the asserted claim was materially broader than that canceled application claim.  The parties focused the Court on a single issue with respect to that question.  The Court found that the patented claim was not materially broader than the application claim, and thus affirmed.

The opinion can be found here.

By Nika Aldrich

ALSO THIS WEEK

Kamstrup A/S v. Axioma Metering UAB, Appeal No. 2021-1923 (Fed. Cir. Aug. 12, 2022)

In an appeal from a final written decision of the Patent Trial and Appeal Board (PTAB), the Federal Circuit addressed challenges to the Board’s claim constructions as well as its anticipation and obviousness determinations.  First, the Court affirmed the Board’s claim constructions, finding the Board construed the claims in accordance with the specification and the claim language.  Second, the Court affirmed the Board’s determinations as to anticipation and obviousness, explaining that Kamstrup’s arguments were conditioned on incorrect claim constructions and that the Board’s findings were supported by substantial evidence.

The opinion can be found here.

By Annie White

LSI Corporation v. Regents of the University of Minnesota, Appeal No. 2021-2057 (Fed. Cir. Aug. 11, 2022)

In this appeal, the Federal Circuit addressed whether the PTAB erred in rejecting LSI’s anticipation theory based on prior art that summarized and relied on earlier work from UMN inventors who were also the sole inventors of the patent in question.  The Federal Circuit held that the PTAB correctly found that the relevant portion of the prior art relied on by LSI was a description of the earlier work from the UMN inventors and, thus, that the prior art did not qualify as “the work of another.”  The Federal Circuit also rejected an additional argument from LSI by relying on the well-established rule that arguments not raised in the opening brief on appeal are waived.

The opinion can be found here. 

By Mario Delegato

In re McDonald, Appeal No. 2021-1697 (Fed. Cir. Aug. 10, 2022)

On an appeal from a decision from the PTAB rejecting claims, the Federal Circuit affirmed the PTAB’s application of the recapture rule and found that a reissue application was defective.

In order to overcome a rejection during prosecution, McDonald added several claim limitations regarding a “processor.”  McDonald filed an application for reissue of that patent, but without the “processor” limitations, and the USPTO and PTAB rejected the application on the basis that it was an improper re-capture of surrendered subject matter.  The Federal Circuit noted that because the public must be able to rely on a patent application’s record to understand what is protected and what is not, the recapture rule prevents a patentee from regaining through reissue what it voluntarily surrendered during prosecution.  The Federal Circuit applied the three-factor recapture analysis: (1) whether and in what aspect the reissue claims are broader than the patent claims; (2) if broader, whether those broader aspects of the reissue claim relate to the surrendered subject matter; and (3) if so, whether the surrendered subject matter has crept into the reissue claim.  The facts in this case led to a straightforward affirmance of the PTAB: (i) without the “processor” limitations, the reissue claims were broader than the patent; (ii) the additional breadth related to the surrendered subject matter, which McDonald had voluntarily surrendered by adding “processor” limitations during prosecution; (iii) such that the surrendered subject matter crept back into the reissue claim.

The opinion can be found here.

By Tyler Hall

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This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.