Hologic, Inc. v. Minerva Surgical, Inc.
957 F.3d 1256
Fed. Cir.2020Background
- Hologic (assignee) sued Minerva (founded by former NovaCept inventor Csaba Truckai) for infringement of U.S. Pat. Nos. 6,872,183 (method claims for detecting uterine perforation) and 9,095,348 (device claims for an ablation applicator).
- Truckai assigned his patent applications to NovaCept (later acquired by Cytyc/Hologic); he later founded Minerva and led development of a competing device (EAS).
- Minerva petitioned for IPRs on both patents; the PTAB found the ’183 claims unpatentable and the Federal Circuit later affirmed that IPR decision; the PTAB denied IPR for the ’348 claims.
- At summary judgment the district court held assignor estoppel barred Minerva from challenging validity of the ’348 claim in district court, but later the Federal Circuit’s affirmance of the PTAB rendered the ’183 claims invalid and Hologic was collaterally estopped from asserting them further.
- A jury found infringement and awarded Hologic damages; post-trial the district court awarded supplemental damages for post-verdict infringing sales of the ’348 claim but miscalculated the dates for pre- and post-judgment interest (later vacated and remanded on that point).
Issues
| Issue | Hologic's Argument | Minerva's Argument | Held |
|---|---|---|---|
| Whether assignor estoppel bars Minerva from relying on the Federal Circuit/PTAB invalidity finding of the ’183 patent in district court | Assignor estoppel should preclude Minerva from using the IPR outcome to avoid liability | Minerva may rely on the IPR/Fed. Cir. invalidity ruling; assignor estoppel does not apply to IPR results | Assignor estoppel does not preclude Minerva from relying on the court’s affirmance of the PTAB invalidating the ’183 claims; Hologic is collaterally estopped from asserting those claims |
| Whether assignor estoppel bars Minerva from litigating invalidity of claim 1 of the ’348 patent in district court | Assignor estoppel applies because Truckai assigned the patents, later founded Minerva, and Minerva is in privity with him | Assignor estoppel should not apply (claim was broadened after assignment; unfair to bar challenge) | District court did not abuse discretion: assignor estoppel applies to bar Minerva from asserting invalidity of the ’348 claim; narrow exceptions (e.g., prior-art evidence to limit claim scope) remain available |
| Proper constructions of "applicator head" and "indicator mechanism" in the ’348 claim | Hologic supported district court constructions that do not import a moisture/permeability requirement and treat indicator broadly | Minerva urged narrowing: require a permeable/absorbent applicator head and indicator that displays widths in units | Affirmed: "applicator head" not limited to permeable moisture-removing surface; "indicator mechanism" need only indicate a uterine dimension (not limited to calibrated units) |
| Whether the jury’s undifferentiated damages verdict must be vacated because the ’183 claims were later invalidated | Damages are sustainable because undisputed evidence (expert) showed the same royalty applies to the ’348 claim alone | Jury verdict defective for failing to apportion between patents; new trial required | No new trial: undisputed expert testimony supported that the damages award can be attributed to infringement of the ’348 claim alone, so the award stands |
| Supplemental/enhanced damages and interest calculation | Hologic sought broader supplemental damages (including a design-around), higher post-judgment rate, and enhancement; requested interest from the jury-judgment date | Minerva opposed inclusion of unpleaded products and enhancement | District court correctly excluded sales of the unaccused design-around product and properly declined to increase/enhance the royalty; but the court erred in using August 13, 2018 (instead of June 3, 2019 final judgment date) for computing pre- and post-judgment interest on supplemental damages—interest ruling vacated and remanded |
Key Cases Cited
- Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir. 1988) (establishes and explains assignor estoppel and its justifications)
- Arista Networks, Inc. v. Cisco Sys., Inc., 908 F.3d 792 (Fed. Cir. 2018) (assignor estoppel does not bar an assignor from filing an IPR)
- Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275 (Fed. Cir. 2017) (application of assignor estoppel to parties in privity and limits on defenses)
- Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342 (U.S. 1924) (limits on estoppel when assignment occurs before patent grant)
- Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249 (U.S. 1945) (recognizes exceptions to assignor estoppel)
- Lear, Inc. v. Adkins, 395 U.S. 653 (U.S. 1969) (abolition of licensee estoppel; discussed for contrast)
- Blonder‑Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313 (U.S. 1971) (issue preclusion in patent invalidity contexts)
- XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282 (Fed. Cir. 2018) (concurrent affirmance of PTAB invalidity has issue‑preclusive effect)
- WesternGeco L.L.C. v. ION Geophysical Corp., 913 F.3d 1067 (Fed. Cir. 2019) (when undifferentiated damages may survive invalidation of some claims)
- Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295 (Fed. Cir. 2007) (apportionment/new‑trial principles for undifferentiated jury verdicts)
- Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (U.S. 2016) (standards for enhanced damages)
- Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369 (Fed. Cir. 2017) (standard of review and discretion for enhanced/supplemental damages)