New Vision Gaming v SG Gaming
New Vision Gaming & Development, Inc. v. SG Gaming, Inc., FKA Bally Gaming, Inc.
Nos. 2020-1399, 2020-1400 Fed. Cir. May 13, 2021 Before Circuit Judges Newman, Moore, and Taranto. Opinion by Circuit Judge Moore. Opinion concurring in part and dissenting in part filed by Circuit Judge Newman.
New Vision Gaming & Development, Inc. appealed two covered-business method decisions in which the Patent Trial and Appeal Board held that all claims and proposed claims are patent ineligible under 35 U.S.C. § 101. Since the Board issued those decisions before Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), the Arthrex challenge was not waived by the appellant’s “raising it for the first time in its opening brief before this Court.” The Court vacated and remanded for further proceedings consistent with Arthrex. Judge Moore’s opinion specifically stated that “we need not reach any other issue presented in this case.”
Judge Newman agreed that Arthrex applied and that “the decision of the unconstitutional Patent Trial and Appeal Board” should be vacated. She opined, however, that “a threshold issue requires resolution” that could render remand “unnecessary and unwarranted.” The parties had agreed to a forum selection of state or federal court in Clark County, Nevada in their patent license. New Vision asked for compliance with that agreement. The Board declined to respect the forum selection agreement, stating that New Vision cited no statute rule or binding precedent that provided for a contractual estoppel defense.
The Director of the PTO intervened in this appeal to argue that the Court has no jurisdiction to review this action because it is final and nonappealable under 35 USC §324(e). Judge Newman indicated that §324(e) does not bar review of Board decisions that are separate from the institution decision.
Judge Newman stopped short of reaching a substantive conclusion on the issue, but indicated that “precedent requires respecting an agreed selection of forum.” She noted that each side had briefed the issue, and that resolution was required “now, rather than after a full PTAB proceeding on remand.” To do otherwise postponed the determination, which she found to be “both inefficient and unnecessary.”
Read more: Federal Bar member attorneys may access the full case summary by registered patent attorney B.C. “Bill” Killough in the July 2021 issue of Federal Circuit Case Digest.
B.C. Killough is a registered patent attorney based in Charleston, SC. On behalf of his clients, Bill has obtained more than 300 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.
Additionally, you may read the full opinion here.