New Vision Gaming & Development, Inc. v. SG Gaming, Inc. (Bally Gaming) (Fed. Cir. 2021)
In a pair of CBM decisions, the PTAB found New Vision’s patent claims ineligible under Section 101. New Vision had proposed alternative claims, but those were also found to be invalid. On appeal, the Federal Circuit did not review the merits, but instead vacated and remanded on Arthrex grounds.
New Vision requests that we vacate and remand the Board’s decisions in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). Because Arthrex issued after the Board’s final-written decisions and after New Vision sought Board rehearing, New Vision has not waived its Arthrex challenge by raising it for the first time in its opening brief before this Court. Thus, we vacate and remand for further proceedings consistent with Arthrex, and we need not reach any other issue presented in this case.
Judge Newman authored an opinion that dissents in-part. In particular, Judge Newman argued that the choice-of-forum clause in a contract between the parties required any dispute over the patent to be resolved in a Nevada-based court, not in the USPTO. “The Board refused to respect the forum selection agreement, and proceeded to final decision of the petitions.” Judge Newman argued that the appellate panel should consider the issue before remanding.
Judge Newman particularly wanted to decide this issue here with her colleague Judges Moore on the panel (along with Judge Taranto). A parallel question is question under consideration in Kannuu Pty Ltd., v. Samsung Electronics Co., Ltd. (Fed. Cir. 2021). Oral arguments are expected in that case in July 2021 before a yet-to-be-disclosed panel.
U.S. Patent Nos. 7,451,987 and 7,325,806. The parallel litigation (filed in Nevada) is stayed pending outcome of the CBM review. New Vision Gaming &
Development, Inc. v. Bally Gaming Inc., No. 2:17-cv-01559-APG-BNW (D.