In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd., No. 21-1638 (Fed. Cir. 2021), the Court held that because a patent review claim does not relate to an earlier nondisclosure agreement between the parties, a forum selection provision in that NDA does not preclude the proceedings before the USPTO.
In 2012, Samsung contacted Kannuu, an Australian start-up that develops media-related products, inquiring about Kannuu’s remote control search-and-navigation technology. The companies entered into a NDA to protect confidential business information while engaging in discussions. The NDA explains: “[N]othing contained in this Agreement will be construed as granting any rights to the receiving party, by license or otherwise, to any of the Confidential Information disclosed.” A forum selection clause identified New York for purposes of choice of laws principles and as the venue for any proceedings, stating that any legal action arising from it or the “transactions contemplated hereby” would be brought in Manhattan. In 2013, the parties ceased communications without reaching an agreement as to licensing the technology.
Six years later, Kannuu sued Samsung, alleging patent infringement and breach of the NDA. Samsung filed petitions for inter partes review (“IPR”) bvefore the Patent Board, alleging that all claims of the asserted patents are unpatentable as obvious and not novel. Kannuu argued that Samsung violated the NDA’s forum selection clause in filing for such review. The Patent Trial and Appeal Board denied IPR for three patents (on the merits) but instituted review for two asserted patents. The Federal Circuit affirmed the denial of a preliminary injunction to compel Samsung to seek dismissal of the review process as the IPR does not relate to the NDA and is thus not subject to the NDA.
Kannuu argued that the review proceedings related to the NDA because it could rebut Samsung’s arguments with evidence that Samsung copied its technology, which would show it violated the NDA. But that possibility was “too attenuated” for the NDA to block the IPR case, The Court said. In a dissent, Circuit Judge Pauline Newman said the agreement barred the IPR proceedings because it was “not disputed that the infringement suit is subject to the forum selection clause, and that the patents that Samsung presented to the PTAB are the patents that Samsung is accused of infringing.”