Dowd Scheffel Files Amicus Curiae Brief in Case Concerning Forum Selection Clauses
March 18, 2021: Dowd Scheffel was pleased to work with distinguished law professors Jonathan M. Barnett, Richard A. Epstein, Jay P. Kesan, Adam Mossoff, and Kristen Osenga to submit an amicus brief in support of Kannuu’s appeal on an important issue in intellectual property law. The case involved the intersection of contractual agreements to resolve disputes between parties and the inter partes review (“IPR”) process set out by the America Invents Act. The case addressed whether forum selection clauses were enforceable against companies that sought review of patents through the IPR process. This issue has important impact for patent owners that license their patents and seek to negotiate the proper forum to resolve all disputes relating to those patents. Recently, the Federal Circuit, in Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics, Inc., adopted the view of the professors that forum selection clauses are enforceable and can preclude parties from filing IPRs. A copy of the brief can be found here.
Update November 10, 2022: The Federal Circuit denied Kannuu’s appeal for an injunction and the case was remanded to the PTAB for further determination of the IPRs. On September 21, 2022, the PTAB issued Final Written Decisions determining that all the challenged claims were invalid. The district court litigation involving the patents is stayed. The case is presently on appeal at the Federal Circuit (22-1526, 1527). The issues raised on appeal continue to impact the issue of how secondary considerations should be analyzed, in particular the appeal raises due process arguments concerning discovery of petitioners in IPRs concerning secondary considerations. Briefing in the appeal is ongoing.