NIH Licensing Forum: Assignor Estoppel in Patent Challenges and a Recent Supreme Court Decision

July 21, 2021

NIH Licensing Forum: Assignor Estoppel in Patent Challenges and a Recent Supreme Court Decision

For this week's Tuesday Licensing Forum @ 2pm we will have a special presentation and discussion with Raymond Van Dyke, JD of Van Dyke IP Law and current Washington, DC Area Chapter Chair for the Licensing Executives Society (LES).

Assignor estoppel is a legal doctrine that prevents a party who assigned a patent to another from later challenging the validity of the assigned patent in litigation. The Supreme Court in Minerva Surgical, Inc. v. Hologic, Inc. on June 29. 2021 clarified the law in this area. At this time, assignor estoppel remains a defense to invalidity in patent challenges whether in district court or inter partes review (IPR) proceedings. Raymond Van Dyke presents on the Supreme Court's finding in Minerva Surgical, Inc. v. Hologic, Inc. and how this impacts inventors, assignors, assignees, licensors and others.

About the speaker: Raymond Van Dyke is an Attorney and Educator. In his practice he helps a variety of clients in their IP matters. He specializes in patent, trademark and copyright matters in various technologies, litigation, licensing, and procurement. After being a partner in big firms, in 2010 he started his own IP consultancy in Washington, DC, with diverse domestic and international clientele and technologies, handling matters at the US Patent and Trademark Office (USPTO), Federal Circuit and local State and Federal courts.

He teaches an IP course for engineers, businesspeople and other professionals at Southern Methodist University, where he is an Adjunct Professor, and also teaches at the National Institutes of Health (NIH) and other institutions. He is the Chair of the DC Chapter of LES; an AIPLA Fellow and former Chair of a number of Committees; recent Chair of the Montgomery County Bar Association IP Section, an Officer in the Maryland State bar Association's Intellectual Property Section, former Board Member of the DC Chapter of the ACM, former Board Member of ITechLaw (Formerly Computer Law Association); and continues his involvement in IPO, AIPPI, ABA, BIO, IEEE and other legal and technical organizations.