US Supreme Court Limits Estoppel Rule In Minerva Surgical v. Hologic
The ruling keeps the principle of assignor estoppel in place, but limits its use to situations where an inventor’s claims in court directly contradict those in the patent.
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The US Supreme Court found that the role of administrative judges in patent review was unconstitutional but could be fixed by giving the PTO’s director more oversight, reinforcing the staying power of the patent appeals process.
High court finds PTAB judges were unconstitutionally appointed; ruling is unlikely to benefit one party over another in inter partes review proceedings, attorneys say, but that could depend on the director. PTO is expected to provide guidance on how and when to request review of Patent Trial and Appeal Board decisions.
The case questions whether inventors should be able to later claim a patent is invalid in court, with justices appearing likely to craft a middle path.