Minerva Surgical, Inc. v. Hologic, Inc.

Opinion

Justice Kagan delivered the opinion of the Court.

] In Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 266 U. S. 342, 349, 45 S. Ct. 117, 69 L. Ed. 316, 1925 Dec. Comm'r Pat. 410 (1924), this Court approved the “well settled” patent-law doctrine of “assignor estoppel.” That doctrine, rooted in an idea of fair dealing, limits an inventor’s ability to assign a patent to another for value and later contend in litigation that the patent is invalid. The question presented here is whether to discard this century-old form of estoppel. Continuing to see value in the doctrine, we decline to do so. But in upholding assignor estoppel, we clarify that it reaches only so far as the equitable principle long understood to lie at its core. The doctrine applies when, but only when, the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.

Inventors look to the patent system to obtain valuable rights. A typical patent application, filed with the U. S. Patent and Trademark Office (PTO), includes a written description and drawing of the invention and one or more claims particularly setting out the invention’s scope. See 35 U. S. C. §§111-113. The application [*9]  also usually contains an inventor’s oath—a statement attesting that the applicant is “the original inventor” of the “claimed invention,” so that he is entitled to the patent sought. §115. If the PTO decides that the invention meets the “conditions for patentability”—mainly, that the invention is useful, novel, and non-obvious—it will issue a patent to the inventor. See §§101-103. That award gives the inventor the right to exclude others from making, using, or selling the invention until the patent expires (currently, 20 years after the application date). See §154.

The invention sparking this lawsuit is a device to treat abnormal uterine bleeding, a medical condition affecting many millions of women. Csaba Truckai, a founder of the company Novacept, Inc., invented the device—called the NovaSure System—in the late 1990s. He soon afterward filed a patent application, and assigned his interest in the application—as well as in any future “continuation applications”—to Novacept.¹ The NovaSure System, as described in Truckai’s patent application, uses an applicator head to destroy targeted cells in the uterine lining. To avoid unintended burning or ablation (tissue removal), the head is “moisture permeable,” [*10]  meaning that it conducts fluid out of the uterine cavity during treatment. The PTO issued a patent, and in 2001 the Food and Drug Administration (FDA) approved the device for commercial distribution. But neither Truckai nor Novacept currently benefits from the NovaSure System patent. In 2004, Novacept sold its assets, including its portfolio of patents and patent applications, to another company (netting Truckai individually about $8 million). And in another sale, in 2007, respondent Hologic, Inc. acquired all patent rights in the NovaSure System. Today, Hologic sells that device throughout the United States.

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