The U.S. District Court for the Southern District of New York held that a forum selection clause contained in an expired nondisclosure agreement did not preclude Samsung for pursuing patent challenges against NuCurrent at the Patent Trial and Appeal Board. In 2015, NuCurrent’s CEO had visited Samsung’s headquarters and demonstrated the company’s wireless charging technology for cellphones and other mobile devices. NuCurrent filed a trade secrets case in 2018 alleging that Samsung stole its trade secrets and incorporated the wireless charging technology into its Galaxy S7 and S8 cellphones. NuCurrent has also sought to obtain patents for the technology at issue, which Samsung is now challenging. NuCurrent sought a preliminary injunction to require Samsung to withdraw its requests that the Patent Trial and Appeal Board examine the validity of NuCurrent’s patents pursuant to a nondisclosure agreement between the parties that required legal disputes to be litigated in New York. The agreement, however, expired over a year before Samsung challenged the patents. Although the agreement states that confidentiality obligations will survive expiration, the federal district court held that the forum selection clause did not similarly survive. Moreover, Samsung’s patent challenge is based on prior art, rather than any confidential information disclosed under the nondisclosure agreement. Notably, U.S. District Judge Denise Cote distinguished this case from a recent Federal Circuit ruling requiring MechSource to drop its challenges to several patents pursuant to a forum selection clause.

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