A growing trend pushes IP disputes arising from any agreement into arbitration or a particular court (and thus out of the PTAB).
Question: Should Congress pass a law prohibiting agreements not-to-challenge patents via inter partes review? (making such agreements unenforceable)
— Dennis Crouch (@patentlyo) February 9, 2022
If a party bargains to keep their patents out of that privy court and selects what it considers a more just or less political forum – then why not? The patent is still subject to challenge albeit in a different forum, and besides you will not be able to bind a third party (some astro-turfing ‘do gooder’) from dragging the patents into PTAB anyways. Consider the fight over the CRISPR patents (of which I have no interest), if I were a party to that fight, I would very much want the review to be confidential and between the parties via some expert panel of technology/legal professionals and would want some form of high/low agreement whatever the outcome. In contrast, IMHO, the PTAB due to political and public pressure (of which IMHO it is not immune) would be more likely to invalidate all claims of both parties.
In other words, I would like to see congress pass a law that overturns Lear.
IDK. I thought Leer was an absolute prohibition vs. a mere choice of forum.
The first comment to this tweet is the following:
Bad patents are bad, but contracts only apply to contracting parties. So these agreements don’t prevent bad patents from being challenged at the PTAB.
I think this summarizes my position quite nicely. As implied by this comment, the poll presents the fallacy of a false dilemma. There are more options than those presented by the poll (i.e., contract law applies or bad patents exist).
Regardless, I don’t think there is a need to protect (mostly) sophisticated parties who are (presumably) represented by counsel from entering into agreement that they subsequently regret doing.
There’s the rub: “sophisticated parties who are (presumably) represented by counsel.” That excludes patent assignment agreements with such choice of forum clauses by most inventors. Also all “counsel” who had no reason to think before now that a choice of forum clause would exclude all statutory federal agency actions as well as determining litigation forum, unless that was specifically pointed out and agreed to as in this case.
You imagine a rub, but You (the Royal you) are entering into a legal agreement — do You think that you might want to have an opinion of a knowledgeable attorney?
Do you think a knowledgeable attorney merely rubber stamps sections of boilerplate together?
Your argument is a fallacy – almost opposite of the fallacy of authority.
? Is this even needed? Agreements not to challenge issued patent validity in post-grant PTO reviews have already been widely considered unenforceable on public policy grounds [and Congressional intent?] since at least reexaminations and presumably interferences long before that? [The same as prohibitions of validity challenges in general, or licensee estoppel, in license agreements.]
So, if the real question is what will be the effect of The CAFC approving Nippon Shinyaku Co., Ltd. enjoining Sarepta Therapeutics, Inc.’s IPRs with a boiler-plate forum selection clause? Even if that escapes en banc or cert review, the main immediate effect will be on licensee attorneys who accept such broad clauses.
Sorry, line 3 should have said “for those with” a normal boiler-plate forum selection clause?
Care to cite some cases?
Greg, note Lear, Inc. v. Adkins, 395 U.S. 653 (1969) & MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 124 (2007) [and later decisions citing them] that were cited by Dennis as being ignored in this Fed. Cir. Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics, Inc. But my point here was simply that unless and until overruled, this Fed. Cir. makes unexpectedly dangerous the drafting of new choice of forum clauses in patent licenses, including IPR and litigation settlements, and it is not even clear if it will cause an existing normal [this was not] boiler-plate clause for choice of forum for litigation to be interpreted as prohibition of any validity contest anywhere?
Quick answer: No.
Slow answer: No.
There be no need for Congress to stick their collective noses into arms-length contractual IP agreements between parties.
Besides, today’s SCOTUS will — rightly — strike down any such law.
Another option: authoritarianism is not “BAD” (unless it is not my desired flavor of authoritarianism).
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