Forum Selection Clause Can Preclude PTO Validity Challenges

• Published date: 11 March 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Sheppard Mullin Richter & Hampton
• Author: Mr James Gatto

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 any validity challenge was required to be brought in that court and that Sarepta's IPR petitions filed with the Patent Trial and Appeal ("the Board") contravened the plain language of the forum selection clause.

The significance of this case is that the Federal Circuit confirmed that parties can contractually negotiate away their right to file IPRs or other validity challenges in the Patent Office. An important takeaway from this case is that careful consideration should be given to the scope of any forum selection clauses regarding patent infringement or invalidity actions. Here, the relevant confidentiality agreement included a forum selection clause to govern patent and other...