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United States Court of Appeals for the Federal Circuit
May 13, 2021, Decided
Moore, Circuit Judge.
New Vision Gaming & Development, Inc., appeals two covered-business method review final-written decisions. [*2] 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 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. See C.A. Casyso GmbH v. HemoSonics LLC, No. 20-1444 (Oct. 27, 2020) (non-precedential order) (vacating and remanding in analogous circumstances). Thus, we vacate and remand for further proceedings consistent with Arthrex, and we need not reach any other issue presented in this case.
VACATED AND REMANDED
Each side shall bear its own costs.
Concur by: NEWMAN (In Part)
Dissent by: NEWMAN (In Part)
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 appropriate to vacate the decision of the unconstitutional Patent Trial and Appeal Board ("PTAB" or "Board").1 However, in this case a threshold issue requires resolution, for the Arthrex remand may be unnecessary and unwarranted. There may be no basis for any PTAB proceeding at all, for the parties to this dispute had [*3] agreed to a different forum, and New Vision Gaming & Development, Inc. asks for compliance 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 provides:
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
2021 U.S. App. LEXIS 14154 *; 996 F.3d 1378; 2021 U.S.P.Q.2D (BNA) 531; 2021 WL 1916374
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
Prior History: [*1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. CBM2018-00005, CBM2018-00006.
Disposition: VACATED AND REMANDED.
Patent, vacate, decisions, forum selection