Forum Selection Clauses Can Doom PTAB Review

By Cynthia Lambert Hardman, Marta Delsignore and Christopher Morten (April 20, 2018, 1:11 PM EDT) -- A recent case demonstrates the impact forum selection clauses in patent license agreements can have on the availability of patent challenges in the Patent Trial and Appeal Board. In Dodocase VR Inc. v. MerchSource LLC, a magistrate judge ordered a defendant to withdraw its inter partes review and post-grant review petitions from the PTAB.[1] The court held that the forum selection provision in a patent license agreement between plaintiff and defendant precluded the defendant from challenging plaintiff's patents in any forum other than certain California courts. Affirmance of the court's decision would have an important impact on the rights of patent licensees to challenge patentability in the PTAB, and may provide a pathway for patent owners to dispose of PTAB patent challenges....

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