Forum Selection Clause, On Its Own, Does Not Bar PTAB From Instituting IPR Petition

The Patent Trial and Appeal Board has rejected a patent owner’s argument that a forum selection clause found in a Non-Disclosure Agreement (NDA) barred the Board from instituting a petition for inter partes review (IPR).

Petitioner filed an IPR challenging claims of a patent directed to the design, operation and method of manufacture of an efficient inductor and related systems. Patent Owner and Petitioner signed an NDA containing a forum selection clause that specified that “[a]ny legal action, suit or proceeding arising out of or relating to this Agreement or the transactions contemplated hereby must be instituted exclusively . . . within the Borough of Manhattan, City of New York, State of New York and in no other jurisdiction.” After their business relationship deteriorated, Patent Owner filed suit against Petitioner in the Eastern District of Texas (EDTX). Petitioner successfully filed a motion to transfer the case to the Southern District of New York (SDNY) on