Major Concern with the PTAB Goes Unanswered in recent Federal Circuit Decision

Partner Matthew J. Dowd argued a recent appeal which sought answers to major issue with the PTAB and its refusal to consider forum-selection clauses.  On behalf of the firm’s client New Vision Gaming, Mr. Dowd argued before Judges Alan D. Lourie, Sharon Prost, and Jimmie V. Reyna on January 10, 2024.  One of New Vision’s arguments challenged the financial incentives of the PTAB’s decision-making structure.  A major point of the oral argument addressed whether, under the AIA, the PTAB should respect private contracts having a forum-selection clause. The Federal Circuit rebuffed New Vision’s appeal but did so without providing any reasoning when it issued its Rule 36 judgment, summarily affirming the PTAB’s decision.

The case was widely watched and highlighted in several publications. https://www.law360.com/articles/1786125/fed-circ-won-t-elaborate-on-gaming-co-s-ptab-concerns https://www.law360.com/articles/1784526/-obviously-desperate-ip-owner-faces-tough-fed-circ- https://patentlyo.com/patent/2024/01/federal-circuit-rejects.html