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Amicus Brief in Kannuu Pty. Ltd. v. Samsung

Adam Mossoff

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Interest of Amici Curiae

Amici curiae are law professors who specialize in patent law. They teach or write about patent licensing, and about the Patent Trial & Appeal Board (“PTAB”). Amici’s interest in the case is to ensure proper and predictable application of the patent laws in rewarding and securing innovation through marketplace commercialization. They are concerned about the proper interplay between private-party contractual rights and administrative agency action, especially in the context of post-grant challenges at the PTAB. A complete list of signatories is attached as Addendum A.1

Summary of the Argument

This Court should reverse the district court’s decision and grant the preliminary injunction based on the presumptively valid and enforceable forum-selection clause in the parties’ agreement. Appellant Kannuu addresses the factual and doctrinal infirmities in the district court’s construction of the forum-selection clause that resulted in its improper denial of Kannuu’s preliminary injunction motion. Thus, Amici here offer two additional legal insights that are necessary to understand the full scope of the errors in the district court’s analysis.

First, in misconstruing the broad scope of the forum-selection clause, the district court did not give proper legal weight to the importance of a privately negotiated agreement to direct patent challenges to federal district court. Forum-selection clauses are very common in patent licenses and in other contracts, as they are one of many pricing provisions negotiated between parties in ultimately reaching a meeting of the minds and in executing an enforceable contract. In discounting the broad applicability of the forum-selection clause in the parties’ non-disclosure agreement, the district court effectively rewrote a key provision of their contractual agreement.

Second, the district court misinterpreted and misapplied the rule created in Lear, Inc. v. Adkins, 395 U.S. 653 (1969). There, the Supreme Court held that licensee estoppel cannot absolutely prohibit a patent licensee from challenging the validity of a licensed patent. Lear does not apply here. Neither the equitable defense of licensee estoppel nor an absolute prohibition against Samsung’s freedom to challenge Kannuu’s patents exists in this case. Samsung’s ability to invalidate Kannuu’s patents is in no way meaningfully diminished by the forum-selection clause. Samsung could have filed a declaratory judgment action, and it can still assert patent invalidity affirmative defenses and counterclaims in Kannuu’s patent infringement New York lawsuit.

The district court incorrectly generalized from Lear a sweeping and unprecedented public-policy rule. The district court, under the guise of an unconstrained concern about crafting public policy, advanced a novel view that could prohibit any agreement between private parties to have all patent validity challenges decided in federal court. The district court’s analysis not only contradicts the facts and decisional rule in Lear; it also contradicts this Court’s recent rejection of the same argument by an accused infringer who sought to invalidate a valid forum-selection clause in Dodocase VR, Inc. v. MerchSource, LLC, 767 Fed. App’x 930 (Fed. Cir. 2019) (nonprecedential). For this reason, the Court should issue a precedential decision that rejects this novel and dangerous expansion of Lear.

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1 No party’s counsel authored this brief in whole or in part, and no party, party’s counsel, or any other person has contributed money intended to fund the preparation or submission of this brief. All parties consent to the filing of this brief.

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