One of Calderone Bullock’s founding partners, Lynda Calderone, will be presenting on and discussing Hologic Inc. vs. Minerva Surgical Inc., pending before the U.S. Supreme Court, as part of the Joint Patent Practice Continuing Legal Education (JPPCLE) webinar series on June 2, 2021.
Calderone’s presentation will focus on the possible outcomes of the Supreme Court’s review of the doctrine of assignor estoppel, including leaving the doctrine as is, revoking it, possibly modifying, or narrowing it in view of the continuing evolution of non-judicial paths for non-owners to challenge patent validity. Assignor estoppel is an equitable bar that may be applied in an infringement case to prevent assertion of an invalidity defense by an inventor who sold his or her rights in the patent to the plaintiff.
The US Supreme Court appeal is from a holding of the U.S. Court of Appeals for the Federal Circuit that the inventor of a surgical device and his new company (Minerva Surgical Inc.) cannot rely on a validity defense for one of the patents on his device to fight infringement claims brought by the current owner (Hologic Inc.) who purchased that patent, originally held by the inventor’s former employer by assignment from the inventor. The case, Hologic Inc. vs. Minerva Surgical Inc., may change or repeal the long-established doctrine of assignor estoppel and could affect companies who acquire or invest in intellectual property and employer/inventor relations, as well as cast doubt on the value of patent portfolio transfers already completed.
Calderone will weigh in on the views expressed on appeal both for and against assignor estoppel, as well as a possible third option raised by the government to limit, rather than abolish the doctrine.
Lynda Calderone is a founding partner of Calderone Bullock LLC and was listed as a top attorney in Patent Law. She has an extensive background in patent prosecution and litigation. Calderone has extensive experience in the areas of preparation and prosecution of U.S. patent applications as well as intellectual property litigation, including patent and trademark litigation, mediation and dispute resolution. Ms. Calderone is a founding member of the firm and was previously the founding shareholder and Chair of the Intellectual Property Department at a mid-sized New Jersey law firm. Calderone serves a wide variety of clients in the areas of portfolio management, global patent prosecution, appellate and other proceedings before the U.S. Patent and Trademark Office and its Patent Trial and Appeal Board, and foreign opposition practice.