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Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc.

Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc.

United States Court of Appeals for the Federal Circuit

February 8, 2022, Decided

2021-2369

Opinion

 [*1001]  Lourie, Circuit Judge.

Nippon Shinyaku Co., Ltd. ("Nippon Shinyaku") appeals from the decision of the United States District Court for the District of Delaware denying its motion for a preliminary injunction. See Nippon Shinyaku Co.v. Sarepta Therapeutics, Inc., No. 21-cv-1015, 2021 U.S. Dist. LEXIS 208146, 2021 WL 4989489 (D. Del. Oct. 25, 2021) ("Decision"); see also J.A. 5-6. For the reasons provided below, we reverse the decision of the district court, and remand for entry of a preliminary injunction.

Background

I. The Mutual Confidentiality Agreement

On June 1, 2020, Nippon Shinyaku and Sarepta Therapeutics, Inc. ("Sarepta") executed a [**2]  Mutual Confidentiality Agreement ("MCA"). J.A. 508-16. As stated in the MCA, the purpose of the agreement was for the parties "to enter into discussions concerning the Proposed Transaction," which the MCA defined as "a potential  [*1002]  business relationship relating to therapies for the treatment of Duchenne Muscular Dystrophy." J.A. 508-09.

The MCA established a "Covenant Term," which was "the time period commencing on the Effective Date and ending upon twenty (20) days after the earlier of: (i) the expiration of the Term, or (ii) the effective date of termination." J.A. 509. Section 6 of the MCA contained a mutual covenant not to sue, whereby each party agreed that during the Covenant Term it:

shall not directly or indirectly assert or file any legal or equitable cause of action, suit or claim or otherwise initiate any litigation or other form of legal or administrative proceeding against the other Party . . . in any jurisdiction in the United States or Japan of or concerning intellectual property in the field of Duchenne Muscular Dystrophy.

J.A. 512 (MCA § 6.1). Section 6 further stated:

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25 F.4th 998 *; 2022 U.S. App. LEXIS 3385 **; 2022 U.S.P.Q.2D (BNA) 134

NIPPON SHINYAKU CO., LTD., Plaintiff-Appellant v. SAREPTA THERAPEUTICS, INC., Defendant-Appellee

Prior History:  [**1] Appeal from the United States District Court for the District of Delaware in No. 1:21-cv-01015-LPS, Judge Leonard P. Stark.

Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., 2021 U.S. Dist. LEXIS 208146, 2021 WL 4989489 (D. Del., Oct. 25, 2021)

Disposition: REVERSED AND REMANDED.

CORE TERMS

forum selection clause, preliminary injunction, district court, patent, petitions, Covenant, patent infringement, parties, invalidity, proceedings, factors, irreparable harm, expiration, disputes, Sections, litigate, merits, intellectual property, public interest, bargain, reasons

Civil Procedure, Appeals, Standards of Review, Abuse of Discretion, Patent Law, Jurisdiction & Review, Remedies, Injunctions, Preliminary & Temporary Injunctions, De Novo Review, Grounds for Injunctions, Balance of Hardships, Likelihood of Success, Insurance Law, Claim, Contract & Practice Issues, Policy Interpretation, Entire Contract, Business & Corporate Compliance, Patent Law, US Patent & Trademark Office Proceedings, Reexamination Proceedings, Preliminary Considerations, Venue, Forum Non Conveniens, Contracts Law, Contract Conditions & Provisions, Forum Selection Clauses