News & Analysis as of

Patents Forum Selection

Womble Bond Dickinson

Factors Courts Commonly Consider When Deciding Motions to Transfer in ANDA Litigation

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Where the Operative Facts Occurred - In assessing this primary factor, courts have looked to the location of defendant’s principal place of business, where the ANDA application was prepared, and where the ANDA product was...more

McDermott Will & Emery

Don’t Assume Sweet Success: Forum Selection Clause Doesn’t Preclude IPR

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The US Court of Appeals for the Federal Circuit affirmed a district court’s denial of a preliminary injunction seeking to bar a petitioner from challenging certain patents at the US Patent & Trademark Office (PTO) because of...more

Troutman Pepper Locke

Building on Successful Judicial Assignment Reform in Texas

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More than 16 months ago, the two ranking members of the Senate Judiciary Committee asked Chief Justice John Roberts to direct the Judicial Conference of the United States to study forum shopping in patent litigation,...more

Troutman Pepper Locke

EDVA Reaffirms its Aversion to Litigation Between Out of State Companies in Recent Venue Decision

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From the mid-1990s until the mid-2010s, the EDVA typically ranked among the top 10 federal districts for patent litigation. See Gugliuzza, Paul R. and Anderson, Jonas, Why Do Judges Compete for (Patent) Cases? at 24-25...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc.,...

Nippon Shinyaku and Sarepta entered into a Mutual Confidentiality Agreement to facilitate discussions about a potential business relationship related to muscular dystrophy therapies. Section 6.1 of the MCA contained a mutual...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

McDermott Will & Emery

That Stings: Consent to Jurisdiction Must Be Effective at Filing to Invoke Fed. R. Civ. P. 4(k)(2)

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The US Court of Appeals for the Federal Circuit, on petition for writ of mandamus, vacated the district court’s transfer order and remanded the transfer to be considered under the clarified parameters of Fed. R. Civ. P....more

Kilpatrick

8 Key Takeaways - Biggest Surprises in Cross-Border IP and Patent Deals

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Kilpatrick Townsend Partners Siegmar Pohl and Joseph Snyder recently participated in a panel discussion at the Licensing Executives Society 2022 Annual Meeting in San Francisco. They were joined by Pallavi Shah, Managing...more

Venable LLP

Preparing Your Company for Unpredictable, Inconsistent and Volatile IP Disputes - Potential for Abuse at the ITC

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The US government promotes policies that protect IP rights. Patents and copyrights, for example, are so core to US policy that they are expressly discussed in article I of the US Constitution. And the US judiciary has long...more

Saul Ewing LLP

Federal Circuit Rehearing Denial in Forum Selection Ruling Is Good News for Patent Owners

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The Federal Circuit recently denied a petition for rehearing and a petition for rehearing en banc of a precedential panel decision regarding forum selection clauses. Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics,...more

McNees Wallace & Nurick LLC

Forum Selection Clause Precludes IPR—Non Conveniens Becomes Impossibilis

Forum selection provisions appear (or are at least proposed) in all types of agreements and often provoke disagreement in negotiations because of the potential for a real or perceived strategic advantage of a particular court...more

Sunstein LLP

Two Federal Circuit Decisions Show Why Forum-Selection Clauses Require Clarity

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Two recent Federal Circuit decisions involved the interpretation of forum-selection clauses in non-disclosure agreements. In particular, the question was whether the forum selected by the parties prevented a party from...more

International Lawyers Network

Parties to exploratory agreements beware: Contractual restrictions on IPR patent challenges are enforceable!

On February 8, 2022, the U.S. Court of Appeals for the Federal Circuit determined that certain restrictions on the ability to challenge the validity of patents are enforceable. Without such restrictions, companies that are...more

Sheppard Mullin Richter & Hampton LLP

Forum Selection Clause Can Preclude PTO Validity Challenges

In Nippon Shinyaku v. Sarepta Therapeutics, the Federal Circuit held that a forum selection clause specifying that patent infringement or invalidity actions shall be filed in federal district court in Delaware made clear that...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Enforces Forum Selection Clause to Prevent IPR Petitions

The Federal Circuit recently reversed the district court and remanded for entry of a preliminary injunction enjoining defendant Sarepta Therapeutics, Inc. from proceeding with inter partes review (IPR) petitions at the Patent...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Kannuu Pty Ltd. v. Samsung Elecs. Co. Ltd., 15...

Kannuu Pty Ltd. and Samsung Elecs. Co. Ltd. entered into a non-disclosure agreement (NDA) as part of business discussions concerning Kannuu’s remote control search-and-navigation technology. The NDA contained a...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Introduction

Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no exception. It briefly returned to live...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions - February 17th, 1:00 pm - 2:00 pm EST

Sterne, Kessler, Goldstein & Fox invites you to a webinar, "Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions," on Thursday, February 17, 2022. In conjunction with the release of the firm's...more

Jones Day

Rolling The Dice – Discretionary Denial And Forum Selection Clauses

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* The Federal Circuit has just issued an additional decision in this dispute today. We will cover that development further shortly. In a recent decision, the Patent Trial and Appeals Board granted institution of inter...more

Goodwin

Issue 36: PTAB Trial Tracker

Goodwin on

FORUM SELECTION CLAUSES MAY OR MAY NOT PRECLUDE PTAB REVIEW - In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc., No. 21-1638 (Fed. Cir. Oct. 7, 2021), the Federal Circuit considered...more

McDermott Will & Emery

NDA Forum Selection Clause Doesn’t Bar IPR in Response to Subsequent Infringement Suit

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The US Court of Appeals for the Federal Circuit affirmed the denial of a preliminary injunction that would have forced the accused infringer to seek dismissal of its petitions for inter partes review (IPR) based on a...more

Knobbe Martens

IPR Proceedings Were Not Prohibited by a Forum Selection Clause in a Non-disclosure Agreement

Knobbe Martens on

KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD. Before Newman, Prost, and Chen. Appeal from the United States District Court for the Southern District of New York. Summary: The forum selection clause in the parties'...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - September 2021: Inter and Intra Circuit Split Emerges on Forum Selection Clauses Barring PTAB...

In our May 2021 Newsletter, we discussed whether patent owners could contract away the ability for a challenger to bring Patent Trial and Appeal Board (PTAB) invalidity challenges, e.g., inter partes or post grant reviews. We...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - September 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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