Hologic, Inc. v. Minerva Surgical, Inc., No. 19-2054 (Fed. Cir. 2022)Annotate this Case
The Federal Circuit previously affirmed summary judgment of no invalidity for claim 1 of the 348 patent in favor of Hologic, applying the doctrine of assignor estoppel against Minerva. The patent covers an endometrial ablation device for the treatment of uterine bleeding that eliminates the problem of “steam and liquid buildup at the ablation site.” The Supreme Court vacated, holding that assignor estoppel remains a valid doctrine, but that it comes with limits. On remand, the Federal Circuit again affirmed.
Claim 1 is not “materially broader” than the claims assigned to Hologic such that assignor estoppel should not apply. Minerva is estopped from challenging the validity of claim 1. Minerva did not dispute that Truckai executed a broad assignment of his patent rights to NovaCept and later sold NovaCept to Hologic’s predecessor; that NovaCept received appreciable value for those patent rights; that Truckai founded Minerva and used his expertise to research, develop, and obtain FDA approval for Minerva’s Endometrial Ablation System; that his job responsibilities included bringing the System to market to compete with Hologic; and that he is in privity with Minerva.
This opinion or order relates to an opinion or order originally issued on April 22, 2020.