In one of the more daring (and somewhat risky) strategies by an appellant challenging an adverse decision in a covered-business method (CBM) review proceeding, New Vision Gaming asserted a purported conflict of interest by Administrative Patent Judges (APJs) in making institution decisions.  According to the Appellant's argument, the pay, bonus, and supervisory structure of the Patent Trial and Appeal Board raised at least the appearance that APJs could be improperly motivated in their own self-interest to institute CBMs and other post-grant review proceedings (see "Appellant Raises Due Process Issues in New Vision Gaming and Development v. SG Gaming").

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 provided for under the America Invents Act (§ 18) and that the Federal Circuit's jurisdiction is restricted under 35 U.S.C. § 324(e).  Petitioner before the PTAB, SG Gaming, argued that the jurisdictional issue was not appealable as an institution decision under Thryv, Inc. v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020).  Judge Newman countered with her own Supreme Court precedent, that "precedent requires respecting an agreed selection of forum," M/S Bremen v. Zapata Off-Shore Co., 407 U.S. 1 (1972).  The Judge also raised Federal Circuit precedent, that "§ 324(e) does not bar review of Board decisions 'separate . . . to the in[stitu]tion decision,'" citing Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020), and that while appeals cannot be taken from the Board's determination of whether a substantial new question of patentability has been raised, Belkin Int'l, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012), the Board's conduct of the review (which presumably includes whether there should have been any reviewing conduct at all) is reviewable, citing St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014).

New Vision Gaming & Development, Inc. v. SG Gaming, Inc. (Fed. Cir. 2021)
Panel: Circuit Judges Newman, Moore, and Taranto
Opinion by Circuit Judge Moore; opinion concurring in part and dissenting in part by Circuit Judge Newman