Home Legal Advice The Public Private Nature of Patents

The Public Private Nature of Patents


Patent regulation is a unusual combine of personal and public regulation.  Individual inventors and their assigns are granted non-public property rights and the freedom-of-contract to license these rights as they see match.  But, patents are designed to serve a public objective, and  the courts have often struck-down non-public agreements that go too-far — particularly agreements that frustrate the invalidation or cancellation of wrongfully issued patents.

In Kannuu Pty Ltd., v. Samsung Electronics Co., Ltd. (Fed. Cir. 2021), the query on appeal is whether or not an agreement between events can enforceably prohibit the submitting of an Inter Partes Review (IPR) petition.   In the case, Kannuu and Samsung entered into an NDA that included a discussion board choice clause — selecting NYC Courts (Federal or State) as the only real environment for litigating actions or proceedings regarding the agreement.  Kannuu shared substantial details about its patent porfolio.  Samsung determined to not pursue any license agreement however did (allegedly) undertake the  disclosed navigation/search performance Samsung Smart TVs.

Kannuu then sued (6 years later) after a number of of its patents had issued in NYC Federal Court. In response, Samsung filed a batch of IPR petitions. The PTAB granted 2 of 5.  Although Kannuu raised the forum-selection argument to the PTAB, the PTAB did “declined to consider the merits of whether the FSC barred Samsung’s petitions.” Kannuu transient.  Back in courtroom, the district courtroom refused to challenge an  anti-IPR injunction — holding that the discussion board choice clause didn’t exclude IPR filings. The preliminary injunction denial is now on appeal with two primary questions:

  1. Do the phrases of this specific forum-selection-clause prohibit Samsung from submitting the IPR.
  2. If so, is the forum-selection-clause unenforceable as a violation of public coverage favoring patent challenges.

Law professors have gotten intertwined within the appeal with Kannuu being represented by Prof. Ted Sichelmann (USD) and competing amicus briefs filed on all sides:

  • Kannuu Appellant Brief.
  • Kannuu Appellee Brief.
  • Kannuu Prof Amicus Supporting Kannuu. Prof. Adam Mossoff (George Mason) & Matthew Dowd is representing a bunch of regulation professors supporting Kannuu’s place. These embody Profs. Jonathan Barnett (USC); Richard Epstein (NYU/UChicago); Jay Kesan (Illinois); Adam Mossoff (George Mason); and Kristen Osenga (Richmond).
  • Kannuu Prof Amicus Supporting Samsung. Stanford’s IP Clinic (Phillip Malone) has filed a quick supporting Samsung’s place on behalf of a bunch of regulation professors.  These embody Profs. Margo Bagley (Emory); Jeremy Bock (Tulane); Dan Burk (UCIrvine); Michael Carrier (Rutgers); Rochelle Dreyfuss (NYU); Samuel Ernst (GGU); William Gallagher (GGU); Shubha Ghosh (Syracuse); Leah Chan Grinvald (Suffolk); Erik Hovenkamp (USC); Mark Lemley (Stanford); Orly Lobel (USC); Brian Love (SCU); Stephen McJohn (Suffolk); Michael Meurer (BU); Shawn Miller (USD); Tyler Ochoa (SCU); Christopher Turoski (Minnesota).

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Here, I count on that the Federal Circuit will duck the query of normal public coverage and as an alternative affirm the slim interpretation of the forum-selection clause.

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The IPR proceedings proceed to extra ahead. These have been instituted in September 2020 and so we are able to count on a that the ultimate written choice will likely be issued September 2021.   The Federal Circuit has ordered an expedited appeal with oral arguments deliberate for July 2021.


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