Licensing: Impact of Contractual Provisions on Patent Challenges (RECORDING)

Patent owners and challengers alike need to understand the potential of a contractual clause to forestall a challenge at the PTAB.  For example, can a boilerplate forum selection clause in a licensing agreement prevent a validity challenge at the PTAB, even though the clause makes no specific mention of PTAB proceedings? 

In April, Dodocase VR, Inc. v. MerchSource, LLC, a Federal Circuit non-precedential opinion about this issue, caught the attention of stakeholders who believe that it could lead to changes in licensing practices and future litigation.  In response to a petition by the licensee for en banc rehearing of this case, the Federal Circuit recently refused to reconsider its ruling, but this issue could eventually reach the Supreme Court.  MerchSource has signaled its intention to file a petition for writ of certiorari ‒ and a group of law professors have argued that the Federal Circuit was in error in Dodocase. 

This and related topics are now likely to crop up frequently.  This summer, a different patent owner in a case involving an expired NDA did not succeed in fending off an IPR.  The devil may be in the details. 

Our panelists, including a technology transactions attorney, a litigator, and the top IP counsel of a major pharma company, will address issues that licensors and licensees should analyze both before agreements are made and with respect to any existing agreements. 


WIlliam Krovain, Merck

Bridget Smith, Knobbe Martens

David Wille, Baker Botts

William Krovatin

Merck & Co Inc.

Bill Krovatin is senior vice president and assistant general counsel at Merck & Co., Inc. and is responsible for IP matters at Merck including patents, trademarks, copyrights, and IP litigation.  Bill joined Merck in 1993 as an attorney in the IP litigation group.  Previously, he was an attorney at Hoffmann-La Roche and at Morgan & Finnegan.  He is the Board Liaison to IPO’s Licensing Committee. 

Bridget Smith

Knobbe Martens

Bridget Smith is an IP litigation and transactions partner at Knobbe Martens, as well as co-chair of the firm's PTAB trials practice group.  Before law school, Bridget worked as a software engineer at Motorola and SAP.  She currently focuses her practice on issues related to blockchain, smart contracts, distributed ledgers, and cryptocurrencies. 

David Wille

Baker Botts L.L.P.

David Wille is a partner at Baker Botts with a broad IP and technology practice.  The majority of his practice focuses on IP litigation and appellate work (including patent, trade secret, copyright, and trademark litigation), but he has substantial experience in licensing relating to patents, trade secrets, software, and copyrights.  He also handles secured transactions and mergers and acquisitions involving intellectual property. 


Licensing: Impact of Contractual Provisions on Patent Challenges (RECORDING)
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