Contractually Agreeing to Not Petition for Inter Partes Review

by Dennis Crouch

For several years we have been tossing around the question of whether no-IPR contracts are enforceable. In Nippon Shinyaku v. Sarepta Therapeutics (Fed. Cir. 2022), the court says “YES THEY ARE” (at least when an alternate forum is provided).  Although the court did not enter into any serious policy analysis or consideration of Supreme Court precedent  promoting patent challenges such as Lear, Inc. v. Adkins, 395 U.S. 653 (1969); & MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 124 (2007).

As part of a potential cooperative agreement, the parties mutually agreed to a temporary covenant-not-to-sue on IP issues related to Duchenne Muscular Dystrophy research and technology.  The covenant included both in court litigation and also validity challenges before the USPTO. The agreement also included  forum-selection-clause that kicked-in once the no-suit covenant expired.

[T]he Parties agree that all Potential Actions arising under U.S. law relating to patent infringement or invalidity, and filed within two (2) years of the end of the Covenant Term, shall be filed in the United States District Court for the District of Delaware.

Agreement as reproduced in the Slip Op.

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