Inventor Argues Assignor Estoppel Does Not Apply to “Materially Broader” Claims

Insights: Publications Inventor Argues Assignor Estoppel Does Not Apply to “Materially Broader” Claims

Kilpatrick Townsend MEMO|Biopharma Industry Blog

September 23, 2021

Written by April Abele Isaacson and Kasey E. Koballa

As we previously reported, the Supreme Court narrowed the doctrine of assignor estoppel. The Supreme Court remanded to the Federal Circuit Minerva Surgical, Inc.’s question of whether Hologic’s claims are “materially broader” than the claims at the time of assignment, which would bar application of the assignor estoppel doctrine under the Supreme Court’s newly delineated limits. Put simply, “[i]f Hologic’s new claim is materially broader than the ones [the inventor] assigned, then [the inventor] could not have warranted its validity in making the assignment,” and Minerva can challenge the validity of the claims.

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