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In April, Dodocase VR, Inc. v. MerchSource, LLC, a Federal Circuit non-precedential opinion about this issue, caught the attention of stakeholders who believe that it could lead to changes in licensing practices and future litigation.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. 

Speakers:

WIlliam Krovain, Merck

Bridget Smith, Knobbe Martens

David Wille, Baker Botts