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ARTICLE · 11 JULY 2019

Licensors Attempt To Leverage NDAs To Avert PTAB Review

Ropes & Gray LLP
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As discussed a few weeks back, licensors have begun to seek cover from the PTAB via forum selection clauses in their licensing agreements.

United StatesIntellectual Property
Scott A. McKeown
Scott A. McKeown
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Dodocase May Encourage New NDA Strategies

As discussed a few weeks back, licensors have begun to seek cover from the PTAB via forum selection clauses in their licensing agreements. In a recent district court opinion, this strategy was explored as language of a non-disclosure agreement (NDA) between parties pre-litigation.

Left unchecked, the holding in Dodocase could have a chilling effect on pre-suit negotiations as well.

In last Tuesday's ruling in NuCurrent Inc. v. Samsung Electronics Ltd. et al. ( here) the parties had previously entered into a Mutual Confidentiality Agreement ("MCA") in 2015 to explore a potential business relationship. The MCA was effective for twelve months and the parties subsequently entered into an NDA in January 2016. The NDA, which expired in January 2018, included a forum selection clause that stated, in relevant part:

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