Samsung barred from bringing IPR, Fed Circ told

The US Court of Appeals for the Federal Circuit is weighing up whether a private contract bars Samsung from challenging the validity of patents through the inter partes review (IPR) system.

The appeals court will hear arguments in the case, between Samsung and TV software developer Kannuu, today, July 8. The case stems from a non-disclosure agreement (NDA) between the parties, signed when Samsung was weighing up whether to take a licence to Kannuu IP covering navigation technology.

The NDA contained a forum selection clause (FSC), stipulating that any arising litigation must be held in New York—barring Samsung from pursuing an IPR process, Kannuu argues.

Kannuu argues that, after declining to license its patents, Samsung incorporated the relevant technology into its own products, including smart TVs. Kannuu subsequently sued for patent infringement at the US District Court for the Southern District of New York, while Samsung challenged the validity of Kannuu’s patents at the US Patent Trial and Appeal Board (PTAB).

Samsung, meanwhile, contends that the NDA doesn’t apply to IPRs. That was the opinion of the US District Court for the Southern District of New York, which refused to enjoin Samsung from challenging the patents at the PTAB. Kannuu now wants the Federal Circuit to reverse that decision.

The case revolves around whether the IPR proceedings are related to the NDA. Samsung argues that the validity of Kannuu’s patents is a separate issue outside the bounds of the NDA, which covers the use of confidential information. “The existence of the NDA does not in any way determine whether Kannuu’s patents are valid,” Samsung told the court earlier this year.

But Kannuu says the key issue is the allegation that Samsung copied its proprietary technology. The parties agree that Kannuu’s patent infringement suit against Samsung is covered by the FSC, so there is no reason why patent invalidity disputes should be treated differently, the software developer argues.

“Samsung cannot have it both ways, and if copying can bring claims of patent infringement within the scope of the FSC, then copying also can bring claims of patent invalidity within the scope of the FSC,” Kannuu’s brief said.

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