DODOcase recently petitioned the Federal Circuit for en banc rehearing on patent licensing law. The petition raises two questions – paraphrased below:
- Should a general forum selection clause (“disputes shall be litigated before . . . California [Courts]”) be interpreted to exclude AIA trials brought by the licensee?
- What is the enforceability of a license term that prevents a licensee from filing an AIA trial petition (inter partes review of post grant review).
For its part, the Federal Circuit opinion held that the generic forum selection clause did indeed prevent an AIA petition brought by the licensee and assumed that the clause was enforceable – not even considering the impact of Lear.
Two groups have now filed amicus briefs supporting the petition.
Law Professors: A group of 21 law professors signed-on to a brief drafted by Stanford’s IP Clinic run by Phillip Mallone. The brief explains that Lear, Inc. v. Adkins, 395 U.S. 653 (1969), should apply with equal strength (if not more) to contracts barring AIA Trial Challenges by the licensee.
The panel’s sweeping elevation of boilerplate forum selection clause language is contrary to Congress’s clear intent to allow and even facilitate licensee validity challenges before the PTAB. Lear requires courts to consider the exceptionally important patent policy interests in validity challenges. Because the panel failed to engage in any such consideration and ignored binding precedent, this Court should grant rehearing to correct the error.
An industry brief was also filed by a group of companies, including SAS, Vizio, Zilinix, and Garmin as well as the Consumer Electronics Ass’n and Engine. This brief argues that the federal circuit misinterpreted the contract — arguing that boilerplate forum selection clauses pre-AIA licenses should not be interpreted to limit AIA trials. The Brief also explains that the licensing parties already knew and understood at the time of drafting that the terms restricting validity challenges by the licensee were not enforceable.
Read the briefs:
- [Non Precedential Federal Circuit Decision]
- [En Banc Petition]
- [Amicus Brief IP Profs]
- [Amicus Brief Industry]