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Patents Forum Selection Intellectual Property Protection

Troutman Pepper Locke

The Top Five Challenges of Pursuing Litigation at the ITC

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Patent litigation at the International Trade Commission (ITC) is characterized by its rapid pace, with proceedings for investigations under 19 U.S.C. § 1337 typically concluding within 15 to 18 months after the filing of the...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

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

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

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

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

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

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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

Knobbe Martens

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

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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

Sunstein LLP

Beware: Run-of-the-Mill Forum Selection Clause Could Thwart Patent Challenges

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A patent infringement and breach of contract lawsuit in San Francisco may result in a sea change in the ability of licensees to challenge the validity of patents covered by their license. At stake is whether patent owners can...more

Jones Day

Forum Selection Clause May Preclude PTAB Proceedings

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The Federal Circuit recently affirmed a preliminary injunction barring PTAB proceedings in view of a forum selection clause. Dodocase VR, Inc. v. MerchSource, LLC, 2018-1724 (Fed. Cir. Apr. 18, 2019). Dodocase, the owner...more

Knobbe Martens

Common Forum Selection Clause in License Agreement Prevents Patent Validity Challenge at PTAB

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On April 18, 2019, the Federal Circuit issued a non-precedential opinion that is making stakeholders in the patent licensing community sit up and take note. The case was Dodocase VR, Inc. v. MerchSource, LLC, holding that a...more

Morris James LLP

Court Of Chancery Explains When To Stay A Case In Favor Of Foreign Litigation

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Lexington Services Ltd. v. US Patent No. 8019807 Delegate LLC, C.A. 2018-0157-TMR (October 26, 2018) - This decision explains when to stay a Delaware litigation in favor of litigation in a foreign country....more

Mintz - Intellectual Property Viewpoints

Improper Venue for Web-Based Company in light of In re Cray

In our continuing post-TC Heartland coverage, the District of Nevada recently identified a key factor in analyzing venue challenges in patent litigation: whether the public can access the defendant corporation or its services...more

Akin Gump Strauss Hauer & Feld LLP

Northern District of California Enforces Forum Selection Clause in License Agreement and Orders Licensee to Withdraw IPR Petitions

On March 23, 2018, a district court judge issued a preliminary injunction requiring the defendants to withdraw their petitions for inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB). The court granted...more

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 3

The DTSA After One Year: Has the Federal Trade Secrets Law Met Expectations? - On May 11, 2017, the Defend Trade Secrets Act (DTSA) – the law that created a Federal cause of action for trade secret misappropriation –...more

Patterson Belknap Webb & Tyler LLP

Forum Selection Clause Not Triggered Based on Statements Made in Another Forum

On May 15, 2017, District Judge Paul Oetken (S.D.N.Y.) denied the motion of Comcast Corporation, et al. (“Comcast”) for reconsideration of the Court’s prior Order dated December 14, 2016. The Court had earlier denied...more

Farella Braun + Martel LLP

Drafting Intellectual Property Agreements: Best Practices From a Litigator’s Perspective

As intellectual property licensing continues to grow more prevalent, legal practitioners and business personnel are being asked to craft and negotiate agreements that can significantly impact a business’s ability to compete...more

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