Friday, May 14, 2021

Arthrex matter in New Vision case

New Vision won on an Arthrex matter:

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 See C.A. Casyso GmbH v. HemoSonics LLC, No. 20-1444 (Oct. 27, 2020) (non-precedential order) (vacating and remanding in analogous circumstances).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.

[Interesting that the CAFC relies on a NON-PRECEDENTIAL order to establish a precedential case !]

But Judge Newman observed that a forum-selection clause controlled here and wrote:

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 resolved; 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 remand without resolving the issue of forum selection.

What is at stake in this case is a bit MORE than inefficiency.

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 “institution” decision, citing Thryv, Inc. v. Click-To-Call Technologies, 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 decision.” 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 patentability affecting any claim of the patent is raised,’” Belkin 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).

Judge Newman makes strong points about forum selection clauses:

New Vision states that forum selection was a contract condition, as is understandable, for it affects the standard of proof of invalidity. See O’Gorman & Young, Inc. v. Hartford 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 bargained for.”).

Separately, note that IPBiz was in the top twenty of blawgs.


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