Forum Selection Clauses May Bar an IPR

In light of recent Federal Circuit case law, parties involved in licensing, settlement, or confidential business discussions involving patents should carefully consider the impact a forum selection clause may have on the ability to seek an IPR.

Almost anyone can, by statute, request an inter partes review (IPR) of an issued patent, but may limit their right to do so contractually, such as through licensing agreements or non-disclosure agreements (NDAs). These agreements may contain clauses that limit the forum in which any dispute between the parties can be litigated. The Patent Trial and Appeal Board (PTAB) itself has consistently declined to enforce such forum selection clauses, finding that it lacks authority to enforce contracts between the parties, and, in any case, its jurisdiction is statutory and not limited by private agreements between the parties. See, e.g., Rohm Semiconductor USA, LLC v. Maxpower Semiconductor, IPR2020-01676, Paper 15 at 6-7 (PTAB Apr.