May 13, 2021

Federal Circuit Ignores Forum Selection Clause that Could Have Prevented IPR

In New Vision Gaming & Development, Inc., v. SG Gaming, Inc., [2020-1399, 2020-1400] (May 13, 2021) the Federal Circuit vacated PTAB decisions that U.S. Patent Nos. 7,451,987 and 7,325,806, as well as proposed substitute claims, are patent ineligible under 35 U.S.C. § 101, and remanded the case for further proceedings consistent with Arthrex

The Federal Circuit said that because Arthrex issued after the Board’s final-written decisions and after New Vision sought Board rehearing, New Vision had not waived its Arthrex challenge by raising it for the first time in its opening brief before this Court.

Judge Newman agreed that Arthrex applied but dissented because the Court did not address the forum selection clause in the license between the parties. The parties agreed that “any dispute between any of the parties that cannot be resolved amicably” should be resolved in the state and federal courts in the State of Nevada, and thus Judge Newman argued that the forum question requires resolution, for if the parties are committed to a Nevada forum instead of the PTAB, there is no basis for new PTAB proceedings on remand.

Thus, while Judge Newman agreed that the Board’s decision must be vacated under Arthrex, she respectfully dissented from remand without resolving the issue of forum selection.