Erie Doctrine, General Principles, and Running-Out the Clock

by Dennis Crouch

Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc. (Fed. Cir. 2022) (en banc petition pending)

After a failed negotiation, Sarepta petitioned for Inter Partes Review of Nippon Shinyaku’s patents.  But, the two parties had a prior agreement to litigate patent disputes in Delaware courts (i.e., not before the PTAB).  After Sarepta petitioned for IPR, Nippon Shinyaku responded with an action in Delaware Federal Court for breach of contract seeking a preliminary injunction that would force Sarepta to withdraw its IPR petitions based upon the forum selection clause. The Delaware court (Judge Stark) sided denied preliminary relief and instead sided with the patent challenger – finding (1) evidence of breach was lacking and (2) the real irreparable harm would come from barring the IPR.  On appeal the Federal Circuit reversed based upon its own plain language interpretation of the contract.  The result then is that the district court should enter the preliminary injunction on remand.

Sarepta has now petitioned for en banc review: asking two procedural questions, including one on the Erie Doctrine.

Timing Part I: Before getting into the merits of the en banc petition, I want to look for a moment at timing issues. 

Continue reading Erie Doctrine, General Principles, and Running-Out the Clock at Patently-O.