Case: 20-1399 Document: 99 Page: 1 Filed: 05/13/2021
United States Court of Appeals
for the Federal Circuit
______________________
NEW VISION GAMING & DEVELOPMENT, INC.,
Appellant
v.
SG GAMING, INC., FKA BALLY GAMING, INC.,
Appellee
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-1399, 2020-1400
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. CBM2018-
00005, CBM2018-00006.
______________________
Decided: May 13, 2021
______________________
MATTHEW JAMES DOWD, Dowd Scheffel PLLC, Wash-
ington, DC, argued for appellant. Also represented by
ROBERT JAMES SCHEFFEL; DAVID E. BOUNDY, Cambridge
Technology Law LLC, Newton, MA.
Case: 20-1399 Document: 99 Page: 2 Filed: 05/13/2021
2 NEW VISION GAMING v. SG GAMING, INC.
NATHAN K. KELLEY, Perkins Coie LLP, Washington,
DC, argued for appellee. Also represented by GENE WHAN
LEE, New York, NY.
DANA KAERSVANG, Appellate Staff, Civil Division,
United States Department of Justice, Washington, DC, ar-
gued for intervenor. Also represented by JEFFREY B.
CLARK, MELISSA N. PATTERSON; KAKOLI CAPRIHAN, SARAH
E. CRAVEN, THOMAS W. KRAUSE, FARHEENA YASMEEN
RASHEED, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA.
ROBERT GREENSPOON, Flachsbart & Greenspoon, LLC,
Chicago, IL, for amicus curiae US Inventor, Inc.
______________________
Before NEWMAN, MOORE, and TARANTO, Circuit Judges.
Opinion for the court filed by Circuit Judge MOORE.
Opinion concurring in part and dissenting in part filed by
Circuit Judge NEWMAN.
MOORE, Circuit Judge.
New Vision Gaming & Development, Inc., appeals two
covered-business method review final-written decisions. In
those decisions, the Patent Trial and Appeal Board held
that all claims of 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. 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 de-
cisions 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. See
C.A. Casyso GmbH v. HemoSonics LLC, No. 20-1444 (Oct.
27, 2020) (non-precedential order) (vacating and
Case: 20-1399 Document: 99 Page: 3 Filed: 05/13/2021
NEW VISION GAMING v. SG GAMING, INC. 3
remanding in analogous circumstances). Thus, we vacate
and remand for further proceedings consistent with Ar-
threx, and we need not reach any other issue presented in
this case.
VACATED AND REMANDED
COSTS
Each side shall bear its own costs.
Case: 20-1399 Document: 99 Page: 4 Filed: 05/13/2021
United States Court of Appeals
for the Federal Circuit
______________________
NEW VISION GAMING & DEVELOPMENT, INC.,
Appellant
v.
SG GAMING, INC., FKA BALLY GAMING, INC.,
Appellee
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-1399, 2020-1400
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. CBM2018-
00005, CBM2018-00006.
______________________
NEWMAN, Circuit Judge, concurring in part, dissenting in
part.
I agree that Arthrex, Inc. v. Smith & Nephew, Inc.,
941
F.3d 1320 (Fed. Cir. 2019) applies, and that it is appropri-
ate to vacate the decision of the unconstitutional Patent
Case: 20-1399 Document: 99 Page: 5 Filed: 05/13/2021
2 NEW VISION GAMING v. SG GAMING, INC.
Trial and Appeal Board (“PTAB” or “Board”). 1 However, in
this case a threshold issue requires resolution, for the Ar-
threx remand may be unnecessary and unwarranted.
There may be no basis for any PTAB proceeding at all, for
the parties to this dispute had agreed to a different forum,
and New Vision Gaming & Development, Inc. asks for com-
pliance with that agreement.
New Vision and SG Gaming, Inc. 2 mutually agreed, in
their patent license agreement, that if “any dispute” arose,
jurisdiction would be “exclusive” in the appropriate federal
or state court in the state of Nevada. The agreement pro-
vides:
§ 4.f. Governing Law and Forum. This Agreement
shall be construed and enforced in accordance with
the laws of the State of Nevada, without giving ef-
fect to the principles of conflicts of laws. This
Agreement shall be deemed to be a contract made
and entered into in the State of Nevada. In the
event of any dispute between any of the parties
that cannot be resolved amicably, the parties agree
and consent to the exclusive jurisdiction of an ap-
propriate state or federal court located within the
1 Bally Gaming, Inc. v. New Vision Gaming & Dev.,
Inc., No. CBM2018-00005, Paper 19 (P.T.A.B. June 22,
2018) (“Institution Dec.”) (J.A. 86–120); Bally Gaming, Inc.
v. New Vision Gaming & Dev., Inc., No. CBM2018-00006,
Paper 19 (P.T.A.B. June 22, 2018) (J.A. 206–40). See also
Bally Gaming, Inc. v. New Vision Gaming & Dev., Inc., No.
CBM2018-00005,
2019 WL 2527364 (P.T.A.B. June 19,
2019) (“Board Op.”); Bally Gaming, Inc. v. New Vision
Gaming & Dev., Inc., No. CBM2018-00006,
2019 WL
2527169 (P.T.A.B. June 19, 2019).
2 SG Gaming, Inc. was formerly known as Bally
Gaming, Inc. at the time of the agreement.
Case: 20-1399 Document: 99 Page: 6 Filed: 05/13/2021
NEW VISION GAMING v. SG GAMING, INC. 3
State of Nevada, Clark County, to resolve any such
dispute.
J.A. 802.
Dispute arose, and New Vision eventually filed suit in
the federal district court in Nevada. SG Gaming then filed
these petitions in the PTAB. The Board refused to respect
the forum selection agreement, and proceeded to final de-
cision of the petitions. In view of Arthrex, we must vacate
that Board’s decision. Our usual action is to remand to the
PTAB, for redetermination by a new, properly constituted
Board. However, 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 the question of forum warrants attention
before we require a new trial by a new Board.
The PTAB declined to apply the parties’ agreed forum,
stating that it “[does] not discern, nor has Patent Owner
pointed to, any portions of chapter 32 or § 18 of the AIA, or
authority otherwise, that explicitly provide for a contrac-
tual estoppel defense.” Institution Dec. at 10–11; see also
Board Op. at *3 (“[W]e observed that Patent Owner had not
identified any controlling authority—such as by statute,
rule, or binding precedent—that would require the Board
to deny institution of a covered business method patent re-
view based on contractual estoppel.”). However, precedent
requires respecting an agreed selection of forum. See M/S
Bremen v. Zapata Off-Shore Co.,
407 U.S. 1, 9–10 (1972)
(“Forum-selection clauses . . . are prima facie valid and
should be enforced unless enforcement is shown by the re-
sisting party to be ‘unreasonable’ under the circum-
stances.”); see also Powertech Tech. Inc. v. Tessera, Inc.,
660
F.3d 1301, 1310 (Fed. Cir. 2011) (stating that where man-
datory “shall” language is used to designate the proper fo-
rum, “the forum selection clause should be enforced”).
New Vision states that forum selection was a contract
condition, as is understandable, for it affects the standard
Case: 20-1399 Document: 99 Page: 7 Filed: 05/13/2021
4 NEW VISION GAMING v. SG GAMING, INC.
of proof of invalidity. See O’Gorman & Young, Inc. v. Hart-
ford Fire Ins. Co.,
282 U.S. 251, 267 (1931) (“That the right
to contract about one’s affairs is a part of the liberty of the
individual protected by [the Constitution] is settled by the
decisions of this court and is no longer open to question.”);
Gen. Protecht Grp., Inc. v. Leviton Mfg. Co.,
651 F.3d 1355,
1359 (Fed. Cir. 2011) (“[S]uch a forum selection clause
would be meaningless because . . . the merits would have
been litigated in a forum other than that which was bar-
gained for.”).
Both sides have briefed the forum selection question in
this administrative context. New Vision cites Dodocase
VR, Inc. v. MerchSource, LLC, 767 F. App’x 930 (Fed. Cir.
2019) to illustrate removal from the PTAB based on an
agreed choice of forum. SG Gaming states that the Board’s
rejection of the choice of forum is an unreviewable “institu-
tion” decision, citing Thryv, Inc. v. Click-To-Call Technolo-
gies, LP,
140 S. Ct. 1367 (2020). These aspects require
resolution now, rather than after a full PTAB proceeding
on remand.
The Director of the Patent and Trademark Office has
intervened in this appeal to argue that this court has no
jurisdiction to review this action because it is “final and
nonappealable” under
35 U.S.C. § 324(e). However, the
Board’s rejection of the parties’ choice of forum is indeed
subject to judicial review, for § 324(e) does not bar review
of Board decisions “separate . . . to the in[stitu]tion deci-
sion.” Facebook, Inc. v. Windy City Innovations, LLC,
973
F.3d 1321, 1332 (Fed. Cir. 2020). Appeal is barred as to “a
determination ‘whether a substantial new question of pa-
tentability affecting any claim of the patent is raised,’” Bel-
kin Int’l, Inc. v. Kappos,
696 F.3d 1379, 1382 (Fed. Cir.
2012), but not as to “the Board’s ‘conduct’ of the review.”
St. Jude Med., Cardiology Div., Inc. v. Volcano Corp.,
749
F.3d 1373, 1375 (Fed. Cir. 2014).
Case: 20-1399 Document: 99 Page: 8 Filed: 05/13/2021
NEW VISION GAMING v. SG GAMING, INC. 5
Here, the Board’s “conduct” in declining to adhere to
the parties’ contracted forum warrants our review before
remanding to a fresh Board for post-grant litigation. New
Vision cites cogent authority of the Administrative Proce-
dure Act as in SAS Institute, Inc. v. Iancu,
138 S. Ct. 1348,
1359 (2018) and in Cuozzo Speed Technologies, LLC v. Lee,
136 S. Ct. 2131, 2142 (2016). SG Gaming argues that the
license agreement “did not bar SG Gaming from pursuing
CBM reviews” because the Agreement concerned disputes
“relating to the Agreement.” SG Gaming Br. 10. However,
as explained by this court in Texas Instruments Inc. v. Tes-
sera, Inc.,
231 F.3d 1325, 1331 (Fed. Cir. 2000): “Patent in-
fringement disputes do arise from license
agreements. . . . Thus, the governing law clause . . . in any
patent license agreement, necessarily covers disputes con-
cerning patent issues.” I agree that there are niceties, but
they require resolution as a predicate to any remand after
vacatur.
My colleagues decline to reach this question, and
simply hold that Arthrex requires vacatur and remand.
However, the question of forum selection is not thereby re-
solved; it is merely postponed to determination by a new,
constitutionally organized Board. It is both inefficient and
unnecessary to require replacement PTAB proceedings if
the new PTAB does not have jurisdiction to proceed.
Thus, while I agree that the Board’s decision must be
vacated under Arthrex, I respectfully dissent from our re-
mand without resolving the issue of forum selection.
