throbber
Case: 21-1638 Document: 59 Page: 1 Filed: 10/07/2021
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`KANNUU PTY LTD.,
`Plaintiff-Appellant
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Defendants-Appellees
`______________________
`
`2021-1638
`______________________
`
`Appeal from the United States District Court for the
`Southern District of New York in No. 1:19-cv-04297-ER,
`Judge Edgardo Ramos.
`______________________
`
`Decided: October 7, 2021
`______________________
`
`PERRY GOLDBERG, Progress LLP, Los Angeles, CA, ar-
`gued for plaintiff-appellant. Also represented by BERNARD
`H. CHAO, TED SICHELMAN; LEWIS EMERY HUDNELL, III,
`Hudnell Law Group PC, Mountain View, CA.
`
` VICTORIA FISHMAN MAROULIS, Quinn Emanuel Ur-
`quhart & Sullivan, LLP, Redwood Shores, CA, argued for
`defendants-appellees. Also represented by KEVIN P.B.
`JOHNSON; DAVID COOPER, New York, NY; MARISSA RACHEL
`DUCCA, Washington, DC.
`
`

`

`Case: 21-1638 Document: 59 Page: 2 Filed: 10/07/2021
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`2
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`KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD.
`
`
` MATTHEW JAMES DOWD, Dowd Scheffel PLLC, Wash-
`ington, DC, for amici curiae Jonathan M. Barnett, Richard
`A. Epstein, Jay P. Kesan, Adam Mossoff, Kristen Osenga.
`Also represented by ROBERT JAMES SCHEFFEL.
`
` PHILLIP R. MALONE, Juelsgaard Intellectual Property
`and Innovation Clinic, Mills Legal Clinic, Stanford Law
`School, Stanford, CA, for amici curiae Margo A. Bagley,
`Jeremy W. Bock, Dan L. Burk, Michael A. Carrier, Rochelle
`C. Dreyfuss, Samuel F. Ernst, William T. Gallagher,
`Shubha Ghosh, Leah Chan Grinvald, Erik Hovenkamp,
`Mark A. Lemley, Orly Lobel, Brian J. Love, Stephen
`McJohn, Michael J. Meurer, Shawn Miller, Tyler T. Ochoa,
`Christopher M. Turoski.
` ______________________
`
`Before NEWMAN, PROST, and CHEN, Circuit Judges.
`Opinion for the Court filed by Circuit Judge CHEN.
`Dissenting opinion filed by Circuit Judge NEWMAN.
`CHEN, Circuit Judge.
`Kannuu Pty Ltd. (Kannuu) appeals from the district
`court’s denial of its motion for a preliminary injunction
`compelling Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. (collectively, Samsung) to seek
`dismissal of Samsung’s petitions for inter partes review at
`the Patent Trial and Appeal Board (Board). The district
`court did not abuse its discretion in denying the motion.
`Accordingly, we affirm.
`BACKGROUND
`The relevant facts are not in dispute. In 2012, Sam-
`sung contacted Kannuu, an Australian start-up company
`that develops various media-related products (including
`Smart TVs and Blu-ray players), inquiring about Kannuu’s
`remote control search-and-navigation technology. Kannuu
`
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`3
`
`and Samsung entered into a non-disclosure agreement
`(NDA), see J.A. 211–13, to protect confidential business in-
`formation while engaging in business discussions and the
`like.
`The NDA explains that Kannuu and Samsung “desire
`to disclose to one another certain Confidential Information
`. . . to further a business relationship between the par-
`ties . . . and to protect such Confidential Information from
`unauthorized disclosure.” J.A. 211.
`The agreement also explains:
`[N]othing contained in this Agreement will be con-
`strued as granting any rights to the receiving
`party, by license or otherwise, to any of the Confi-
`dential Information disclosed by the disclosing
`party except as specified in this Agreement. Addi-
`tionally, this Agreement imposes no obligation on
`either party to purchase, sell, license, transfer or
`otherwise dispose of any technology, services or
`products, or to engage in any other business trans-
`action. Nothing in this Agreement shall be deemed
`to grant to either party a license under the other
`party’s copyrights, patents, trade secrets, trade-
`marks or other intellectual property rights.
`J.A. 212.
`Of particular relevance, paragraph 15 of the agreement
`contains a forum selection clause:
`If either party employs attorneys to enforce any
`rights arising out of or relating to this Agreement,
`the prevailing party shall be entitled to recover rea-
`sonable attorneys’ fees. This Agreement shall be
`construed in accordance with and all disputes here-
`under shall be governed by the laws of the State of
`New York, without giving effect to any choice of
`laws principles that would require the application
`of the laws of a different country or state. Any legal
`
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`KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD.
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`action, suit, or proceeding arising out of or relating
`to this Agreement or the transactions contemplated
`hereby must be instituted exclusively in a court of
`competent jurisdiction, federal or state, located
`within the Borough of Manhattan, City of New
`York, State of New York and in no other jurisdic-
`tion. Each party further irrevocably consents to
`personal jurisdiction and exclusively in, and agrees
`to service of process issued or authorized by, any
`such court.
`J.A. 213 (emphasis added).
`Following over a year of discussions, in 2013, the par-
`ties ceased communications. No deal (i.e., intellectual
`property license, purchase, or similar agreement) over
`Kannuu’s technology was made. Six years later, on May
`10, 2019, Kannuu filed suit in district court against Sam-
`sung, alleging patent infringement and breach of the NDA.
`Samsung then filed petitions for inter partes review at the
`Board on March 27, 2020, alleging that all claims of the
`asserted patents are unpatentable as obvious and not
`novel. Kannuu responded to Samsung’s petitions by argu-
`ing to the Board, inter alia, that review should not be insti-
`tuted because Samsung violated the NDA’s forum selection
`clause in filing for such review. The Board denied institu-
`tion for three patents (on the merits of failing to show un-
`patentability) but instituted review for the other two
`asserted patents. Kannuu sought rehearing on the basis of
`the forum selection clause but the Board denied the re-
`quest.
`On October 21, 2020, Kannuu filed the preliminary in-
`junction motion at issue in this appeal to compel Samsung
`to seek dismissal of the instituted inter partes reviews. The
`district court denied the motion on January 19, 2021. Kan-
`nuu timely appeals.
`
`

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`5
`
`DISCUSSION
`This case presents a rather common series of business
`events: Samsung and Kannuu engaged in business discus-
`sions under the protections of a non-disclosure agreement.
`The discussions ended without Samsung licensing, pur-
`chasing, or otherwise adopting the property (or technology)
`of Kannuu. Years later, Kannuu sued Samsung in federal
`court for infringement of its patents (covering the technol-
`ogy that was the subject of the previous discussions) and
`for breach of the non-disclosure agreement. Samsung then
`turned to the Patent Office and petitioned for inter partes
`review at the Board, contending that Kannuu’s patent
`claims should be canceled as unpatentable.
`The underlying question that this case presents is one
`of first impression: Does the forum selection clause in the
`non-disclosure agreement between the entities prohibit
`Samsung from petitioning for inter partes review of Kan-
`nuu’s patents at the Board?
`The district court here, albeit in ruling on a motion for
`preliminary injunction, determined the answer to be no
`and declined to grant a preliminary injunction compelling
`Samsung to seek dismissal of its petitions of Kannuu’s pa-
`tents. We discern no abuse of discretion by the district
`court in denying such a motion on this basis.
`“A plaintiff seeking a preliminary injunction must es-
`tablish that he is likely to succeed on the merits, that he is
`likely to suffer irreparable harm in the absence of prelimi-
`nary relief, that the balance of equities tips in his favor,
`and that an injunction is in the public interest.” Winter v.
`Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). We re-
`view a district court’s denial of a preliminary injunction un-
`der the standard of review applied by the regional circuit,
`here the Second Circuit. See Myco Indus. v. BlephEx, LLC,
`955 F.3d 1, 10 (Fed. Cir. 2020). The Second Circuit “re-
`view[s] de novo the District Court’s legal conclusions in de-
`ciding to grant [or deny] a motion for a preliminary
`
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`KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD.
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`injunction, but review[s] its ultimate decision to issue the
`injunction for ‘abuse of discretion.’” Yang v. Kosinski, 960
`F.3d 119, 127 (2d Cir. 2020). The district court’s denial of
`a preliminary injunction here “turn[s] on the interpretation
`of a contract, which presents ‘a legal question . . . reviewed
`de novo.’” Kelly v. Honeywell Int’l, Inc., 933 F.3d 173, 178
`(2d Cir. 2019) (quoting Cap. Ventures Int’l v. Republic of
`Argentina, 552 F.3d 289, 293 (2d Cir. 2009)). We review
`the district court’s weighing of relevant factors for abuse of
`discretion, which “is established ‘by showing that the court
`made a clear error of judgment in weighing relevant factors
`or exercised its discretion based upon an error of law or
`clearly erroneous factual findings.’” Abbott Labs. v.
`Sandoz, Inc., 544 F.3d 1341, 1345 (Fed. Cir. 2008) (quoting
`Novo Nordisk of N. Am., Inc. v. Genentech, Inc., 77 F.3d
`1364, 1367 (Fed. Cir. 1996)). We review the merits of Kan-
`nuu’s arguments on these factors.
`I. Success on the Merits
`Determining whether the forum selection clause pre-
`cludes Samsung from petitioning for inter partes review re-
`quires interpreting the clause in the NDA. We interpret
`the NDA according to New York law because “the interpre-
`tation of private contracts is ordinarily a question of state
`law,” Volt Info. Scis., Inc. v. Bd. of Trs. of Leland Stanford
`Junior Univ., 489 U.S. 468, 474 (1989); Dodocase VR, Inc.
`v. MerchSource, LLC, 767 F. App’x 930, 934 (Fed. Cir.
`2019), and “[g]eneral contract interpretation is not within
`the exclusive jurisdiction of the Federal Circuit,” Texas In-
`struments Inc. v. Tessera, Inc., 231 F.3d 1325, 1329 (Fed.
`Cir. 2000). New York law seeks “to give effect to the ex-
`pressed intention of the parties.” In re MPM Silicones,
`L.L.C., 874 F.3d 787, 795 (2d Cir. 2017). “[A] written agree-
`ment that is complete, clear[,] and unambiguous on its face
`must be [construed] according to the plain meaning of its
`terms.” Greenfield v. Philles Recs., Inc., 780 N.E.2d 166,
`170 (N.Y. 2002).
`
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`7
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`Though the district court held the forum selection
`clause was valid and enforceable, it concluded that the
`plain meaning of the forum selection clause in the NDA did
`not encompass the inter partes review proceedings. See
`Kannuu Pty Ltd. v. Samsung Elecs. Co., No. 1:19-cv-04297-
`ER, 2021 WL 195163, at *4–5 (S.D.N.Y. Jan. 19, 2021). The
`court determined that the inter partes review proceedings
`“do not ‘relat[e] to’ the Agreement or transactions contem-
`plated under it.” Id. at *5 (alteration in original).
`The district court relied on dictionary definitions in
`construing the relevant contractual terms “relating to” and
`“arising out of.” “Relating to,” the district court explained,
`means “connected by reason of an established or discover-
`able relation,” and is synonymous with “in connection
`with,” “associated with,” “with respect to[],” and “with ref-
`erence to.” See Kannuu, 2021 WL 195163, at *4 (quoting
`Merriam-Webster and citing cases relying on other diction-
`aries). “Arising out of,” the district court continued, is un-
`derstood as narrower than “relating to,” as it usually
`indicates a causal connection. See id. (citing Coregis Ins.
`Co. v. Am. Health Found., Inc., 241 F.3d 123, 128 (2d Cir.
`2001), and Phillips v. Audio Active Ltd., 494 F.3d 378, 389
`(2d Cir. 2007)). Kannuu does not dispute these definitions;
`rather, Kannuu maintains that the district court “ignored
`or did not adequately consider the ways in which the valid-
`ity issues are related to the parties’ discussions under the
`NDA.” Appellant’s Br. at 20.
`The district court did not err in its evaluation of the
`scope of the forum selection clause. The district court cor-
`rectly concluded that the inter partes review proceedings
`“do not relate to the Agreement itself,” Kannuu, 2021 WL
`195163, at *4, “[n]or do the [inter partes review] proceed-
`ings relate to transactions contemplated under the Agree-
`ment,” id. at *5. This is because, the district court explains,
`“the Agreement implicates confidentiality and not the in-
`tellectual property rights of the parties.” Id. at *4. Kannuu
`contends that the district court adopted “an unduly narrow
`
`

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`KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD.
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`reading of the [forum selection clause].” Appellant’s Br. at
`17. We disagree. The connection between the two—the in-
`ter partes review proceedings and the NDA—is too tenuous
`for the inter partes review proceedings to be precluded by
`the forum selection clause in the NDA, which is a contract
`directed to maintaining the confidentiality of certain dis-
`closed information, and not related to patent rights.
`Kannuu attempts to draw two different lines of logic
`from the NDA to the inter partes review petitions. The first
`line is as follows: (1) the NDA involves an agreement about
`the exchange of confidential information in contemplation
`of Samsung potentially licensing Kannuu’s patents; (2)
`Kannuu’s patent infringement lawsuit relates to Sam-
`sung’s alleged misuse of that confidential information and
`failure to license Kannuu’s patents; (3) Samsung’s inter
`partes review petitions relate to the patent infringement
`lawsuit because they contest the validity of the same pa-
`tents. Kannuu’s logic fails scrutiny for several reasons.
`Start with point one: Kannuu tells us that “the NDA
`pertained to a potential license of Kannuu’s patents.” Ap-
`pellant’s Br. at 21. Perhaps a license was Kannuu’s hope
`in signing the NDA, but the NDA itself makes clear that it
`does not “grant[] any rights” of this kind (license or other-
`wise) and the agreement “impose[d] no obligation on either
`party” to enter any sort of intellectual property license. See
`J.A. 212; see also Oral Arg. at 1:05–07 (Court: “This is not
`a license agreement, correct?” Counsel: “That is correct”).
`Accordingly, even assuming the parties understood there
`was a chance they would ultimately enter into a separate
`intellectual property license agreement down the road, the
`issues underlying patent infringement and invalidity fall
`outside the scope of the NDA. This is not to say we ignore
`the realities of the positions of the parties in entering into
`an NDA. Surely the parties entered into the NDA to ex-
`change information in furtherance of some sort of business
`relationship. The Agreement explains as much. See J.A.
`211 (“Company and Samsung desire to disclose to one
`
`

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`9
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`another certain Confidential Information . . . to further a
`business relationship between the parties . . . and to protect
`such Confidential Information from unauthorized disclo-
`sure.” (emphasis added)). But that does not mean that fu-
`ture, hoped-for transactions fall within the scope of the
`Agreement.
`The logic of points two and three—the inter partes re-
`views relate to the infringement lawsuit that, in turn, re-
`lates to the NDA—similarly fails. Kannuu states, “[T]he
`patent infringement claims here are covered by the [forum
`selection clause],” Appellant’s Br. at 21, and cites in sup-
`port of this proposition cases from our court such as Texas
`Instruments, 231 F.3d at 1331, and Dodocase, 767 F. App’x
`at 934–35. Kannuu’s reliance on these cases ignores the
`fundamental difference between the nature of a patent li-
`cense agreement and an NDA. Our conclusion in Texas In-
`struments was that the forum selection clause in a license
`agreement between the parties was not limited to issues
`like royalties and cross-licensing but also encompassed the
`patent infringement lawsuit between the parties because
`“[p]atent infringement disputes do arise from license agree-
`ments,” 231 F.3d at 1331 (emphasis added). An adjudica-
`tion of patent infringement allegations or a patent’s
`validity are patent-centric considerations that will neces-
`sarily impact the rights under a patent license agreement.
`But the same is not true for an NDA: an invalidated patent
`or non-infringement determination does not change, dis-
`rupt, or otherwise impact the parties’ NDA obligations.
`Likewise, a finding that a party has breached an NDA is
`devoid of undertaking any patent-related determinations
`such as infringement or validity.1
`
`
`1 The dissent cites to statements made by Samsung
`during oral argument “that the patent issues in this litiga-
`tion are subject to the forum selection of New York.” Dis-
`sent at 3–4. But Samsung only conceded that a party to
`
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`KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD.
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`Kannuu’s reliance on Dodocase to demonstrate the con-
`nection between its NDA and the inter partes review pro-
`ceedings is similarly misplaced, as Dodocase also involved
`a licensing agreement. 767 F. App’x at 932. Kannuu seeks
`to muddle the distinction between the two kinds of con-
`tracts in telling us that its NDA should be understood as a
`“failed license attempt[].” Appellant’s Br. at 23. We disa-
`gree. But true or not, it is in this statement that Kannuu
`demonstrates it understands the key distinction between
`its case and Dodocase—a failed attempt at a license is not
`a license. We do not see, nor does Kannuu adequately ex-
`plain, why failing to bind Samsung in a licensing agree-
`ment should be sufficient to then later bind Samsung from
`petitioning for inter partes review.
`Kannuu also asserts that a district court case, NuCur-
`rent, Inc. v. Samsung Electronics Co., Ltd., No. 6:18-CV-51-
`JRG-KNM, 2018 WL 7821099 (E.D. Tex. Dec. 26, 2018),
`demonstrates that the NDA’s forum selection clause should
`apply to Samsung’s inter partes review petitions here. Nu-
`Current involved an NDA between two parties, one of
`
`
`the NDA had to bring a patent infringement claim in New
`York insofar as any patent claims were brought in conjunc-
`tion with a non-disclosure breach claim. Oral Arg. at
`16:43–17:15. This is an issue of joining claims and does not
`imply, as the dissent suggests, that claims of infringement
`and invalidity would be treated differently under the forum
`selection clause. In fact, Samsung immediately clarified
`that “if the court’s hypothetical were for a bare patent in-
`fringement claim in Texas that does not include NDA
`breach . . . [Kannuu] could potentially sue in Texas.” Id. at
`17:32–49. And yet, the dissent relies on this portion of the
`oral argument to incorrectly suggest that both the majority
`opinion and Samsung believe that validity issues are not
`controlled by the forum selection clause in this NDA but
`infringement claims are.
`
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`which was Samsung, wherein the NDA contained a forum
`selection clause. The district court in NuCurrent found, in
`ruling on Samsung’s motion to transfer to the NDA’s se-
`lected forum, that NuCurrent’s trade secret misappropria-
`tion and willful patent infringement claims were within
`the scope of the forum selection clause in the NDA at issue.
`See id. at *7–8.
`Kannuu appears to rely on NuCurrent in this appeal to
`make a judicial estoppel argument that Samsung should
`not be allowed to contend that an NDA’s forum selection
`clause should be read broadly in one case (NuCurrent) and
`narrowly in another (here). See Appellant’s Br. at 9; see
`also id. at 7–8. The Second Circuit, in applying that dis-
`cretionary doctrine, “typically consider[s] whether the
`party’s argument is ‘clearly inconsistent with its earlier po-
`sition,’ whether the party ‘succeeded in persuading a court
`to accept’ that earlier position, and whether the ‘party
`seeking to assert an inconsistent position would derive an
`unfair advantage or impose an unfair detriment on the op-
`posing party if not estopped.’” United States v. Apple, Inc.,
`791 F.3d 290, 337 (2d. Cir. 2015) (quoting New Hampshire
`v. Maine, 532 U.S. 742, 750–51 (2001)); id. (“Relief is
`granted only when the impact on judicial integrity is cer-
`tain.” (cleaned up)). The transferred-to district court in
`NuCurrent was confronted with the same estoppel argu-
`ment but declined to apply judicial estoppel to Samsung’s
`later argument against extending the forum selection
`clause at issue to encompass inter partes review petitions
`in that case. See NuCurrent Inc. v. Samsung Elecs. Co.,
`Ltd., No. 19cv798 (DLC), 2019 WL 2776950, at *4 (S.D.N.Y.
`July 2, 2019) (Samsung’s earlier position—that “NuCur-
`rent’s patent claims were subject to the NDA’s forum selec-
`tion clause because they alleged ‘willful’ infringement and
`thus were premised on the disclosure of Confidential Infor-
`mation protected by the NDA”—is “neither so clearly in-
`consistent” with its argument that the inter partes review
`petitions fell outside the scope of the NDA’s forum selection
`
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`clause “nor so unfairly detrimental to [NuCurrent] as to
`warrant judicial estoppel.”). And we agree, for the same
`reasons the district court gave, that no such estoppel
`should apply here. At the district court in NuCurrent,
`Samsung argued that the allegations of trade secret mis-
`appropriation and the willful nature of patent infringe-
`ment were related to the NDA because they were premised
`on the disclosure of the confidential information covered by
`the NDA. See NuCurrent, 2018 WL 7821099, at *7. This
`position is not contrary to that which Samsung takes here,
`that is, that the NDA between itself and Kannuu is not re-
`lated to patent validity disputes at the Board. Accordingly,
`we are unpersuaded by Kannuu’s reliance on NuCurrent.
`Kannuu then attempts to draw its second “relat[ed] to”
`line from the NDA to the inter partes review petitions.
`Kannuu maintains that Samsung’s inter partes review pe-
`titions implicate provisions of the NDA because Kannuu
`may rebut Samsung’s obviousness case with evidence of
`Samsung’s copying, which it says derive from its allegation
`that Samsung breached the NDA. This second line draws
`the following path: (1) The NDA involves an agreement
`about the exchange of confidential information in contem-
`plation of Samsung potentially licensing Kannuu’s patents;
`(2) Samsung’s inter partes review petitions seek to cancel
`these patent claims on obviousness grounds; (3) these inter
`partes reviews relate to the NDA because Kannuu can po-
`tentially present, in rebuttal to Samsung’s obviousness
`case in the inter partes reviews, that Samsung copied infor-
`mation in violation of the NDA.
`We disagree that any evidence of copying Kannuu
`might present in the inter partes review proceedings neces-
`sarily means that the inter partes review proceedings fall
`within the scope of the NDA’s forum selection clause. The
`connection here—namely the mere possibility of some fac-
`tual relevancy between the allegations of breach of the
`NDA and potential evidence in the inter partes review—is
`too attenuated to place the inter partes review petitions
`
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`13
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`within the scope of an agreement that was always about
`protecting confidential information and was never about
`patent rights. As one circuit court has explained, in deter-
`mining the scope of an arbitration clause, even if a claim
`“does, at least in part, arise under” or “relat[e] to” the con-
`tract, the claim should not fall within a contract’s arbitra-
`tion clause when it “extend[s] beyond [the] core issues” of
`the contract. Leadertex, Inc. v. Morganton Dyeing & Fin-
`ishing Corp., 67 F.3d 20, 28–29 (2d. Cir. 1995) (The parties
`“could [not] reasonably have expected, or even contem-
`plated, that [the arbitration] clause [in their dyeing and
`washing warehouse agreement] also would extend to a def-
`amation claim based on statements about subjects other
`than [defendant’s] services for [plaintiff]” under the con-
`tract.); see also KTV Media Int’l, Inc. v. Galaxy Grp., LA
`LLC, 812 F. Supp. 2d 377, 387 (S.D.N.Y. 2011) (explaining
`that in determining when a claim is within the scope of a
`forum selection clause, the focus of the inquiry should be
`on whether the “gist of those claims is a breach of [the con-
`tractual] relationship”). We think this principle applies to
`the NDA here and its forum selection clause. That Kannuu
`might present some evidence about a potential NDA
`breach, which might be relevant to the Board’s obviousness
`analysis, to rebut some of the arguments by Samsung in
`the inter partes review proceedings is not enough to place
`the petitions, which are fundamentally about claim patent-
`ability, within the scope of the NDA’s forum selection
`clause, when the NDA is, at its core, about protecting con-
`fidential information. Regardless of the evidence submit-
`ted in the inter partes review proceeding, the ultimate
`result, i.e., whether the patent claims are canceled, vel non,
`will not impact Kannuu’s NDA breach claim. Kannuu con-
`ceded as much to the district court. See Kannuu, 2021 WL
`195163, at *4 (“Kannuu acknowledges . . . in its opposition
`to Samsung’s motion to stay . . . that resolution of the [inter
`partes review] proceedings will have ‘no impact on the
`breach of contract issues to be decided by the Court.’” (quot-
`ing Kannuu)).
`
`

`

`Case: 21-1638 Document: 59 Page: 14 Filed: 10/07/2021
`
`14
`
`KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD.
`
`We also question whether Kannuu’s allegations of
`breach of the NDA provisions would even constitute rele-
`vant evidence of copying, see, e.g., Appellees’ Br. at 15 (cit-
`ing cases explaining the connection required between
`purported evidence of copying and the challenged claims).
`It is Kannuu’s burden to show why the confidential infor-
`mation covered by the NDA would be specifically relevant
`to any claimed invention. Given that patents are neces-
`sarily designed to publicly disclose enough information for
`a skilled artisan to make and use the claimed invention,,
`Kannuu’s broad allegations of copying stemming from
`Samsung’s purported misuse of confidential information,
`without more, are not enough to demonstrate a sufficient
`connection to the challenged patent claims. Put another
`way, on the facts of this case, it is at best unclear whether
`Kannuu has legitimate evidence of copying that will be rel-
`evant to the Board’s analysis in the inter partes review pro-
`ceedings. In view of the foregoing, the district court did not
`err in concluding that the inter partes review proceedings
`do not fall within the scope of the NDA’s forum selection
`clause.
`
`II. Irreparable Harm
`On the second factor—whether Kannuu is likely to suf-
`fer irreparable harm in the absence of preliminary relief—
`Kannuu mainly parrots the arguments it made to the dis-
`trict court, arguing primarily that it is being deprived of its
`bargained-for forum. See Appellant’s Br. at 26. But as we
`just concluded, and so too did the district court, see Kan-
`nuu, 2021 WL 195163, at *5, because the NDA’s forum se-
`lection clause does not govern the inter partes review
`proceedings, Kannuu is not being deprived of its bargained-
`for forum. Kannuu then contends that that it will be irrep-
`arably harmed by the inter partes review proceedings be-
`cause they will subject Kannuu to a greater possibility of
`claim cancellation, as well as additional costs and delays.
`See Appellant’s Br. at 28. But these statements are simply
`attacks on the inherent features of the inter partes review
`
`

`

`Case: 21-1638 Document: 59 Page: 15 Filed: 10/07/2021
`
`KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD.
`
`15
`
`system enacted by Congress, and on the facts presented by
`Kannuu, none of these rise to the level of irreparable harm
`necessary for a preliminary injunction.2 The district court
`accordingly did not abuse its discretion in finding this fac-
`tor to weigh in Samsung’s favor.
`III and IV. Balance of Equities and Public Interest
`As to the last two preliminary injunction factors—the
`balance of the hardships and the public interest—Kannuu
`repeats the arguments it already made as to why the dis-
`trict court erred. See, e.g., Appellant’s Br. at 29 (“Kannuu
`is suffering hardship by being forced to litigate in an un-
`bargained-for forum.”). The district court found that “Kan-
`nuu has failed to show that the balance of the hardships
`tilts in its favor” and “the public interest favors allowing
`Samsung to litigate the validity of the patents at issue be-
`fore the [Board].” Kannuu, 2021 WL 195163, at *6. For
`the reasons already stated, the district court did not abuse
`its discretion on these factors.
`CONCLUSION
`We have considered the parties’ remaining arguments
`and are unpersuaded. Having discerned no error by the
`district court, we affirm the district court’s denial of a pre-
`liminary injunction compelling Samsung to seek dismissal
`of its inter partes review petitions.
`AFFIRMED
`
`
`2 Had Kannuu and Samsung entered a contract
`which applied to inter partes review proceedings, a forum
`selection clause in that hypothetical contract might permit
`Kannuu to avoid inter partes review and its inherent fea-
`tures. But, they did not enter such a contract.
`
`

`

`Case: 21-1638 Document: 59 Page: 16 Filed: 10/07/2021
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`KANNUU PTY LTD.,
`Plaintiff-Appellant
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC.,
`Defendants-Appellees
`______________________
`
`2021-1638
`______________________
`
`Appeal from the United States District Court for the
`Southern District of New York in No. 1:19-cv-04297-ER,
`Judge Edgardo Ramos.
`______________________
`NEWMAN, Circuit Judge, dissenting.
`This appeal is from the district court’s refusal to apply
`the forum selection clause in the Samsung-Kannuu agree-
`ment, selecting specified New York courts as the exclusive
`forum for disputes relating to the agreement. The district
`court held, and my colleagues agree, that the forum selec-
`tion clause does not exclude the forum of the Patent Trial
`and Appeal Board.1 The panel majority holds that a forum
`selection clause in a non-disclosure agreement cannot
`
`1 Kannuu Pty, Ltd. v. Samsung Electronics Co., Ltd.,
`19 Civ. 4297 (ER), 2021 WL 195163 (S.D.N.Y. Jan. 19,
`2021) (“Dist. Ct. Op.”).
`
`

`

`Case: 21-1638 Document: 59 Page: 17 Filed: 10/07/2021
`
`2
`
`KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD.
`
`control the forum for related patent issues unless the
`agreement is also a patent license. I respectfully dissent,
`for the forum selection clause is clear and unambiguous,
`and law and precedent require that it be respected and en-
`forced.
`
`DISCUSSION
`The complaint charging Samsung Electronics Co. with
`patent infringement and breach of contract was filed by
`Kannuu Pty Ltd. in the United States District Court for the
`Southern District of New York, the forum required by a
`Non-Disclosure Agreement between Kannuu and Samsung
`(“the Agreement”). The stated purpose of the Agreement is
`to facilitate discussion of Kannuu’s technology “to further
`a business relationship between the parties.” Agreement
`preamble, Appx443. The business relationship was to con-
`sider the possible licensing to Samsung of Kannuu’s tech-
`nology and patents. However, no license ensued, and
`eventually Kannuu filed this suit in the Southern District
`of New York.
`Samsung’s ans

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