The clause at issue was part of a non-disclosure agreement between Samsung and Australian startup Kannuu Pty Ltd which was signed during licensing negotiations. However, the agreement only related to confidentiality and not the patents themselves.

In 2012, South Korea-based Samsung reached out to Kannuu about potentially licensing its remote control search and navigation technology. The companies signed an NDA that said any legal action arising from the licensing or “the transaction contemplated hereby” would be brought in Manhattan. After 2013, the companies stopped negotiating and never agreed to a license. 

In 2019, Kannuu sued Samsung in Manhattan federal court, claiming that Samsung had infringed its patents by incorporating the technology into its Blu-Ray players and smart TVs. 

In 2020, Samsung filed five petitions at the US Patent and Trademark Office’s Patent Trial and Appeal Board. The tech giant asked it to find the patents invalid and the board agreed to review two of the five petitions. 

In a bid to force Samsung to stop the reviews, Kannuu asked the Manhattan court for a preliminary injunction. Kannuu claims that the reviews violated the NDA’s forum-selection clause. In January, US District Judge Edgardo Ramos ruled in favour of Samsung, finding the PTAB proceedings did not implicate the agreement. 

Kannuu then asked the Federal Circuit to reverse the decision. It claims that the district judge had ignored the ways that the patent-validity issues related to the companies’ discussions. 

However, US Circuit Judge Raymond Chen, alongside Circuit Judge Sharon Post, stated that the non-disclosure agreement could not prevent Samsung from challenging the patents at the board.





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