Minerva, on its face, seems relatively straight forward--assignor estoppel survives in some cases.  But how will District Courts handle mandatory fact discovery? And what can companies do to anticipate the future?

 

More on Robert Merges.

 

SPEAKERS

Rob Merges (BCLT/Berkeley Law), Wayne Stacy

 

Wayne Stacy  00:01

Welcome to the Berkeley Center for Law and Technology's Expert Series podcast. I'm Wayne Stacy, the Executive Director for BCLT. And with me today is Professor Rob Merges from the Berkeley School of Law. Today, we're talking about the Supreme Court's recent Minerva surgical case, and its impact on tech companies. Rob, thank you for joining us.

 

Rob Merges  00:25

Good to be here.

 

Wayne Stacy  00:27

Well, let's start, as they say, at the beginning, the Supreme Court in Minerva held that assignor estoppel survives in some cases, but not all, and then it remanded it back for more fact finding. And what we know is that it's still an equitable matter that the court will get to decide based on whatever facts it comes up with. So how do you see these types of cases playing out practically in the future?

 

Rob Merges  00:58

Well, I think we, we have some guidance from Supreme Court. But you know, I think the remand you mentioned is suggestive of the fact that they expect the case law to have to flesh out the factors that will be important. In the Supreme Court opinion, the idea was to return the doctrine to its equitable roots. They seem to pay attention to the fact that, like a lot of patent applications, the claims here were amended, you know, long after the priority date. And in a way that the inventor suggested, you know, deviated from his understanding of the nature of the invention. But I think the equitable factor is is just going to be whether it's fair under the circumstances, to find an estoppel, given certain facts. And the facts that they seem to be suggesting, need to be considered are, you know, what the inventor knew how the inventor understood the invention. And maybe you might say, the magnitude of the amendments, and how far the continuation application was stretched or pushed beyond the boundaries of what the inventor, you know, can be shown to have understood. I think that's really the those are the equitable factors that they're pushing on.

 

Wayne Stacy  02:31

How do you see these equitable factors interplaying with the continuation practice, that's become so commonplace?

 

Rob Merges  02:42

Yeah. So, you know, I think the the Supreme Court didn't make a per se rule or didn't didn't directly address head on perceived abuses of continuation practice. But I think latent in the opinion, is some suspicion about, you know, aggressive amendment practicing. And that might suggest to the courts that, you know, if they want to limit the, the effect of the Minerva case, they might just say that this is a case that applies to you know, sort of radical amendments, because we can assume that they weren't contemplated, but the inventors contemplation would sort of be an afterthought. And the real purpose would be to turn this into a tool. In some cases, you know, only where an inventor is willing to attack his own patent. But in those cases, you could turn this into a tool to limit continuation practice. And maybe that's a suggestion that we ought to take a hard look at that practice, outside the estoppel context. I'm not the first person to suggest that continuation practice, and, you know, the purchase of open applications has been subject to some manipu