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ARTICLE · 10 FEBRUARY 2022

Rolling The Dice – Discretionary Denial And Forum Selection Clauses

Jones Day
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* The Federal Circuit has just issued an additional decision in this dispute today. We will cover that development further shortly.

United StatesIntellectual Property

* The Federal Circuit has just issued an additional decision in this dispute today. We will cover that development further shortly.

In a recent decision, the Patent Trial and Appeals Board granted institution of inter partes review, after declining to exercise its discretion to deny institution based on a forum selection clause. Sarepta Therapeutics, Inc. v. Nippon Shinyaku Co., Ltd., et al., IPR2021-01136, Paper 19 (January 13, 2022). The Patent Owner Nippon urged the PTAB to exercise its discretion to deny institution based on a forum selection clause in an agreement between the parties. Concluding that the facts of this case did not support a discretionary denial, the PTAB instituted IPR of Nippon's patent.

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