Rolling Dice

Rolling The Dice – Discretionary Denial And Forum Selection Clauses, PTAB Litigation Blog

Visit the PTAB Litigation Blog.

The Federal Circuit has just issued an additional decision in this dispute today.   We will cover that development further shortly.

In a recent decision, the Patent Trial and Appeals Board granted institution of inter partes review, after declining to exercise its discretion to deny institution based on a forum selection clause.  Sarepta Therapeutics, Inc. v. Nippon Shinyaku Co., Ltd., et al., IPR2021-01136, Paper 19 (January 13, 2022).  The Patent Owner Nippon urged the PTAB to exercise its discretion to deny institution based on a forum selection clause in an agreement between the parties.  Concluding that the facts of this case did not support a discretionary denial, the PTAB instituted IPR of Nippon’s patent.

Sarepta Therapeutics, Inc. filed a Petition for IPR of claims 1 and 2 of U.S. Patent No. 10,407,461 (“the ’461 patent”).  The ’461 patent is owned by Nippon Shinyaku Co., Ltd.  The Parties are currently engaged in district court litigation involving the ’461 patent and the Parties’ Mutual Confidentiality Agreement (“Agreement”).  See Nippon Shinyaku Co., Ltd., et al. v. Sarepta Therapeutics, Inc., Case No. 1-21-cv-01015 (D. Del. filed July 13, 2021).

Read the full article at

Insights by Jones Day should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request permission to reprint or reuse any of our Insights, please use our “Contact Us” form, which can be found on our website at This Insight is not intended to create, and neither publication nor receipt of it constitutes, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.