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Minerva Surgical Inc. v. Hologic Inc.

Docket No.20-440
Op. BelowFed. Cir.
ArgumentApr 21, 2021

Holding

The well-grounded patent law doctrine of assignor estoppel applies only when the assignor's claim of invalidity contradicts explicit or implicit representations the assignor made in assigning the patent.

Judgment

Vacated and remanded, 5-4, in an opinion by Elena Kagan on Jun 29, 2021. Justice Alito filed a dissenting opinion. Justice Barrett filed a dissenting opinion, in which Justices Thomas and Gorsuch joined.

Proceedings & orders timeline

Sep 30, 2020
Petition for a writ of certiorari filed. (Response due November 5, 2020)
Oct 14, 2020
Blanket Consent filed by Petitioner, Minerva Surgical, Inc.
Nov 5, 2020
Brief of respondents Hologic, Inc., et al. in opposition filed.
Nov 5, 2020
Brief amici curiae of Intellectual Property Professors filed.
Nov 5, 2020
Brief amicus curiae of Engine Advocacy filed.
Nov 24, 2020
DISTRIBUTED for Conference of 12/11/2020.
Nov 24, 2020
Rescheduled.
Nov 24, 2020
Reply of petitioner Minerva Surgical, Inc. filed.
Dec 9, 2020
DISTRIBUTED for Conference of 1/8/2021.
Jan 8, 2021
Petition GRANTED.
Feb 22, 2021
Brief of petitioner Minerva Surgical, Inc. filed.
Feb 22, 2021
Joint appendix volumes 1 and 2 with supplemental appendix filed. (Statement of costs filed)
Feb 22, 2021
Blanket Consent filed by Petitioner, Minerva Surgical, Inc.
Feb 25, 2021
Brief amicus curiae of New York Intellectual Property Law Association in support of neither party filed.
Feb 26, 2021
Brief amicus curiae of Engine Advocacy filed.
Mar 1, 2021
Brief amici curiae of Intellectual Property Law Professors filed.
Mar 1, 2021
Brief amicus curiae of Intellectual Property Owners Association filed in support of neither party.
Mar 1, 2021
Brief amicus curiae of American Intellectual Property Law Association filed in support of neither party.
Mar 1, 2021
Brief amicus curiae of United States in support of neither party filed.
Mar 1, 2021
Brief amicus curiae of New York City Bar Association in support of neither party filed.
Mar 12, 2021
SET FOR ARGUMENT on Wednesday, April 21, 2021.
Mar 15, 2021
Record requested.
Mar 24, 2021
Brief of respondents Hologic, Inc., et al. filed.
Mar 26, 2021
Motion of the Acting Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument filed.
Mar 30, 2021
CIRCULATED
Mar 31, 2021
Brief amicus curiae of United Therapeutics Corp. filed. (Distributed)
Mar 31, 2021
Brief amicus curiae of Pharmaceutical Research and Manufacturers of America filed. (Distributed)
Mar 31, 2021
Brief amici curiae of Leading Technology Composites, Inc. and Clarkwestern Dietrich Building Systems LLC filed. (Distributed)
Apr 5, 2021
Motion of the Acting Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument GRANTED.
Apr 7, 2021
Reply of petitioner Minerva Surgical, Inc. filed. (Distributed)
Apr 21, 2021
Argued. For petitioner: Robert N. Hochman, Chicago, Ill. For United States, as amicus curiae: Morgan L. Ratner, Assistant to the Solicitor General, Department of Justice, Washington, D. C. For respondents: Matthew M. Wolf, Washington, D. C.
Jun 29, 2021
Judgment VACATED and case REMANDED. Kagan, J., delivered the opinion of the Court, in which Roberts, C. J., and Breyer, Sotomayor, and Kavanaugh, JJ., joined. Alito, J., filed a dissenting opinion. Barrett, J., filed a dissenting opinion, in which Thomas and Gorsuch, JJ., joined.
Aug 2, 2021
JUDGMENT ISSUED.

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