(Slip Opinion) OCTOBER TERM, 2020 1 Syllabus NOTE: Where it is feasible, a syllabus (headnote) will be released, as is being done in connection with this case, at the time the opinion is issued. The syllabus constitutes no part of the opinion of the Court but has been prepared by the Reporter of Decisions for the convenience of the reader. See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337. SUPREME COURT OF THE UNITED STATES Syllabus MINERVA SURGICAL, INC. v. HOLOGIC, INC., ET AL. CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT No. 20–440. Argued April 21, 2021—Decided June 29, 2021 In the late 1990s, Csaba Truckai invented a device to treat abnormal uterine bleeding. The device, known as the NovaSure System, uses a moisture-permeable applicator head to destroy targeted cells in the uterine lining. Truckai filed a patent application and later assigned the application, along with any future continuation applications, to his company, Novacept, Inc. The PTO issued a patent for the device. No- vacept, along with its portfolio of patents and patent applications, was eventually acquired by respondent Hologic, Inc. In 2008, Truckai founded petitioner Minerva Surgical, Inc. There, he developed a sup- posedly improved device to treat abnormal uterine bleeding. Called the Minerva Endometrial Ablation System, the new device uses a moisture-impermeable applicator head to remove cells in the uterine lining. The PTO issued a patent, and the FDA approved the device for commercial sale. Meanwhile, Hologic filed a continuation application with the PTO, seeking to add claims to its patent for the NovaSure System. Hologic drafted one of its claims to encompass applicator heads generally, without regard to whether they are moisture perme- able. The PTO issued the altered patent in 2015. Hologic then sued Minerva for patent infringement. As relevant here, Minerva rejoined that Hologic’s patent was invalid because the newly added claim did not match the invention’s written description, which addresses applicator heads that are water permeable. In re- sponse, Hologic invoked the doctrine of assignor estoppel. Because Truckai had assigned the original patent application, Hologic argued, he and Minerva could not impeach the patent’s validity. The District Court agreed that assignor estoppel barred Minerva’s invalidity de- fense. The Court of Appeals for the Federal Circuit affirmed in rele- vant part. Minerva now asks this Court to abandon or narrow assignor 2 MINERVA SURGICAL, INC. v. HOLOGIC, INC. Syllabus estoppel. Held: Assignor estoppel is well grounded in centuries-old fairness prin- ciples, and the Federal Circuit was right to uphold it. But assignor estoppel applies only when the assignor’s claim of invalidity contra- dicts explicit or implicit representations he made in assigning the pa- tent. Pp. 5–17. (a) Courts have long applied the doctrine of assignor estoppel to deal with inconsistent representations about a patent’s validity. The doc- trine got its start in late 18th-century England and crossed the Atlan- tic about a hundred years later. This Court first considered and ap- proved the doctrine in …
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