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New Vision Gaming & Development, Inc. v. SG Gaming, Inc. (Fed. Cir. 2021) | McDonnell Boehnen Hulbert & Berghoff LLP

New Vision s arguments were unavailing, however, as the Federal Circuit avoided the issue entirely, ruling last week that the Board s decision be vacated and the case remanded for hearing before a constitutionally properly appointed panel. The basis for this decision is that New Vision had not waived its challenge under
Arthrex, Inc. v. Smith & Nephew, now under review by the Supreme Court. The Federal Circuit s opinion was written by Judge Moore joined by Judge Taranto and in part by Judge Newman, who also dissented-in-part. It is Judge Newman s dissent that is noteworthy, because Judge Newman believed that the question of whether a contract/license between the parties, designating the District of Nevada as the forum for any dispute, should have precluded the PTAB from asserting jurisdiction (and as a threshold issue might have precluded remand if the PTAB had improperly done so). The PTAB, intervenor in this appeal, maintained that the jurisdiction issue was not pro ....

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Judge Newman Dissents from the Federal Circuit in New Vision Gaming, Argues "Threshold Issue" of Forum-Selection Clause Must be Addressed First | Rothwell, Figg, Ernst & Manbeck, P.C.

Earlier this month, in the precedential decision
New Vision Gaming & Development, Inc. v. SG Gaming, Inc., FKA Bally Gaming, Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) vacated and remanded a decision by the Patent Trial and Appeal Board (“the Board”) on the ground that the decision issued after the CAFC’s
Arthrex, Inc. v. Smith & Nephew, Inc. decision (where the CAFC made administrative patent judges of the Board “inferior officers” under the U.S. Appointments Clause). New Vision is appealing two covered-business method review final written decisions in which the Board held all claims of the patents at issue patent ineligible under 35 U.S.C. § 101. The CAFC’s opinion, delivered by Judge Moore, is short and largely unremarkable. What is more interesting, however, is Judge Newman’s dissent. ....

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USPTO Precedential Opinions and Denials of Institution

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The Current State of Precedential Opinions and Denials of Institution at the USPTO Patent Trial and Appeal Board: Part 1
Wednesday, May 5, 2021
This article is the first of three that will discuss the USPTO Patent Trial and Appeal Board (“Board”)’s use of Precedential Opinions as guidance when exercising discretion whether to institute petitions for post-grant proceedings,
inter partes reviews (IPRs) and post-grant reviews (PGRs). In particular, this article addresses the precedential decision,
Apple Inc. v. Fintiv, Inc.,
[1] which outlines six factors for the Board to consider when denying a petition under 35 U.S.C. § 314(a) based on a parallel proceeding. The second article will discuss how the Board can exercise discretion to deny institution under § 325(d) if the petition relies on the same or similar prior art/arguments presented during examination, using the test outlined in ....

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February 2021: Patent Litigation Update | Quinn Emanuel Urquhart & Sullivan, LLP

New Challenge to IPR Discretionary Denials in View of Parallel Patent Litigation
On August 31, 2020, four leading tech companies filed a declaratory action against Andrei Iancu, the Director of the U.S. Patent and Trademark Office (“USPTO”), challenging the USPTO’s discretionary authority under 35 U.S.C. § 314(a) to deny
inter partes review (“IPR”) petitions in view of parallel patent litigation.
Apple, Inc. v. Iancu, Case No. 5:20-CV-06128-EJD, Dkt. 1 (N.D. Cal. Aug. 31, 2020). Just two weeks later, several self-proclaimed Small Business Inventors, led by the non-profit US Inventor, moved to intervene seeking to enhance the Director’s discretionary authority. Dkt. 28. Soon after, US Inventor moved for a preliminary injunction to enjoin the USPTO from instituting ....

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Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Thryv, Inc. v. Click-To-Call Technologies, Inc., 140 S. Ct. 1367 (2020) | Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Thryv, Inc. v. Click-To-Call Technologies, Inc., 140 S. Ct. 1367 (2020) | Sterne, Kessler, Goldstein & Fox P.L.L.C.
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