Hologic, Inc. v. Minerva Surgical, Inc., No. 19-2054 (Fed. Cir. 2020)
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Truckai and his NovaCept team developed NovaSure, which was FDA-approved to detect perforations in the uterus. NovaCept incorporates the 183 and 348 patents, which list Truckai as an inventor. Truckai assigned to NovaCept his interests in the applications from which those patents claim priority and all continuation applications. Hologic is the current assignee of the patents and markets NovaSure. Truckai left NovaCept and founded Minerva, which developed EAS; EAS received FDA approval for the same indication as NovaSure. Hologic sued Minerva for infringement. In addition to asserting defenses of lack of enablement and failure to provide an adequate written description, Minerva sought inter partes review (IPR).
The Patent Board instituted IPR of the 183 patent but denied IPR of the 348 patent and found the 183 claims unpatentable as obvious. Hologic appealed to the Federal Circuit. The district court declined to dismiss the infringement claim as moot and granted Hologic summary judgment that the doctrine of assignor estoppel bars Minerva from challenging the patents' validity, of no invalidity, and of infringement. A jury awarded damages.
The Federal Circuit affirmed the Board’s decision that the 183 patent claims are invalid. The district court determined that the decision did not affect the verdict.
The Federal Circuit affirmed that assignor estoppel bars the assignor from asserting the invalidity of the 348 patent in district court. Assignor estoppel does not preclude Minerva from relying on the Board's decision to argue that the 183 patent claims are void ab initio, justifying the denial of a permanent injunction, enhanced damages, and ongoing royalties.
The court issued a subsequent related opinion or order on August 11, 2022.
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