Fact Dispute as to Scope of Assignment Precludes Summary Judgment on Assignor Estoppel

The court denied plaintiff's motion for summary judgment that defendant's invalidity counterclaim was barred by assignor estoppel because defendant's founders were named inventors of the patent-in-suit and assigned plaintiff the right to the patent's application. "It is undisputed that [defendant] is in privity with [the inventors]. But the question remains, and the parties greatly dispute, whether [the inventors] assigned to [plaintiff] an invention that is claimed in the [patent]. The issue turns on whether the invention assigned by [the inventors] to [plaintiff] is different from or merely a narrower version of the invention claimed in the [patent]. Although assignor estoppel is an equitable doctrine for the Court to ultimately decide, these subsidiary factual disputes make summary judgment on the issue inappropriate at this time."

Verinata Health, Inc., et. al. v. Ariosa Diagnostics, Inc., et al, 3-12-cv-05501 (CAND January 4, 2018, Order) (Illston, USDJ)