16 min

Beyond the holding—A nuanced look at the Federal Circuit's patent decisions | Episode 2 BCLT's Expert Series

    • Education

 This week, we interview Seth Lloyd:
Alternative rationales, attorney fees, and NDAs stretched too far.
Can parties contract away their rights to file an IPR? And what can a party expect when it fails to appeal an alternative rationale?
Every other week, BCLT Executive Director Wayne Stacy conducts interviews with a Morrison & Foerster team member to discuss the Federal Circuit's recent patent decisions. We all know the basic holdings. The key, however, lies in the nuances of how the Federal Circuit reached its decision. If you want to know more—with an eye toward predicting the future—we have the nuanced information for you.
 
SPEAKERS
Seth Lloyd, Wayne Stacy
 
Wayne Stacy  00:00
Welcome, everyone to the Berkeley Center for Law and Technology's Federal Circuit podcast. I'm your host, Wayne Stacey, the Executive Director for BCLT. And we're here again to talk about some of the nuances from recent Federal Circuit decisions. We have today with us again, one of the experts from Morrison and Forester, Seth Lloyd specializes in appellate litigation, including appellate litigation at the Federal Circuit. So thank you for joining us today.
 
Seth Lloyd  00:28
Thanks for having me. Wayne, really great to be here.
 
Wayne Stacy  00:31
So there were two cases that popped out in the last two weeks that they can be glossed over when you when you look at some of the reporters that come out, but that really deserve a little bit of extra attention. The first is the Kannuu case. And you flag that one, because it really seems to tell us something about NDAs and this idea of pre litigation discussions. So would you walk us through kind of how it got to the Federal Circuit?
 
Seth Lloyd  01:02
Yeah, sure. I think it's a little bit of a hot topic right now in the interplay between NDAs or arbitration agreements and the availability of review at the patent office. So IPR is in PTAB. So that's kind of this case, really, right in the center of all that, I thought was interesting, because it actually drew amicus briefing during the initial appeal briefing. So sometimes, at the Federal Circuit, it's not uncommon to see amicus briefing once there's a petition for rehearing but but this one actually had amicus briefing on both sides of the issue at the kind of initial appeal stage. And the cases, just kind of the background facts are, you have Kannuu, who's the plaintiff and patent owner. They're an Australian startup company focused on media related products. So kind of navigation of smart TVs. And several years ago, Samsung contacted Kannuu expressing apparently some interest in in technology. And before the parties got too far along, they entered into a standard kind of non disclosure agreement so that they could speak freely about their respective technologies and businesses. The agreement contained a fairly common forum selection clause. And the clause stated that any legal action suit or proceeding, and this is kind of that the key language arising out of or relating to this agreement, or the transactions contemplated here by, must be instituted exclusively in a court of competent jurisdiction in Manhattan in New York. So that was the forum selection clause. The parties talked for a bit more than a year, but basically failed to reach any agreement. nothing came of it, at least initially, but about six years after the initial discussions Kannuu sued Samsung in District Court in New York, alleging patent infringement and breach of the NDA agreement, and Samsung responded as many defendants now do by filing several petitions for IPR, for intra parties reviews at the patent off

 This week, we interview Seth Lloyd:
Alternative rationales, attorney fees, and NDAs stretched too far.
Can parties contract away their rights to file an IPR? And what can a party expect when it fails to appeal an alternative rationale?
Every other week, BCLT Executive Director Wayne Stacy conducts interviews with a Morrison & Foerster team member to discuss the Federal Circuit's recent patent decisions. We all know the basic holdings. The key, however, lies in the nuances of how the Federal Circuit reached its decision. If you want to know more—with an eye toward predicting the future—we have the nuanced information for you.
 
SPEAKERS
Seth Lloyd, Wayne Stacy
 
Wayne Stacy  00:00
Welcome, everyone to the Berkeley Center for Law and Technology's Federal Circuit podcast. I'm your host, Wayne Stacey, the Executive Director for BCLT. And we're here again to talk about some of the nuances from recent Federal Circuit decisions. We have today with us again, one of the experts from Morrison and Forester, Seth Lloyd specializes in appellate litigation, including appellate litigation at the Federal Circuit. So thank you for joining us today.
 
Seth Lloyd  00:28
Thanks for having me. Wayne, really great to be here.
 
Wayne Stacy  00:31
So there were two cases that popped out in the last two weeks that they can be glossed over when you when you look at some of the reporters that come out, but that really deserve a little bit of extra attention. The first is the Kannuu case. And you flag that one, because it really seems to tell us something about NDAs and this idea of pre litigation discussions. So would you walk us through kind of how it got to the Federal Circuit?
 
Seth Lloyd  01:02
Yeah, sure. I think it's a little bit of a hot topic right now in the interplay between NDAs or arbitration agreements and the availability of review at the patent office. So IPR is in PTAB. So that's kind of this case, really, right in the center of all that, I thought was interesting, because it actually drew amicus briefing during the initial appeal briefing. So sometimes, at the Federal Circuit, it's not uncommon to see amicus briefing once there's a petition for rehearing but but this one actually had amicus briefing on both sides of the issue at the kind of initial appeal stage. And the cases, just kind of the background facts are, you have Kannuu, who's the plaintiff and patent owner. They're an Australian startup company focused on media related products. So kind of navigation of smart TVs. And several years ago, Samsung contacted Kannuu expressing apparently some interest in in technology. And before the parties got too far along, they entered into a standard kind of non disclosure agreement so that they could speak freely about their respective technologies and businesses. The agreement contained a fairly common forum selection clause. And the clause stated that any legal action suit or proceeding, and this is kind of that the key language arising out of or relating to this agreement, or the transactions contemplated here by, must be instituted exclusively in a court of competent jurisdiction in Manhattan in New York. So that was the forum selection clause. The parties talked for a bit more than a year, but basically failed to reach any agreement. nothing came of it, at least initially, but about six years after the initial discussions Kannuu sued Samsung in District Court in New York, alleging patent infringement and breach of the NDA agreement, and Samsung responded as many defendants now do by filing several petitions for IPR, for intra parties reviews at the patent off

16 min

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