In Re: Vivint, Inc.
MOORE, SCHALL, O’MALLEY
September 29, 2021
Brief Summary: PTO has the authority to reconsider ex parte reexamination under § 325(d).
Summary: Vivint appealed USPTO denial of its request to dismiss Alarm.com’s request for ex parte rexamination of U.S. 6,717,513 after Alarm’s multiple attempts to challenge the validity using the IPR system. This FC panel opinion explained that “in the post-AIA world, a patent can be reexamined either in federal court during a defense to an infringement action, in an ex parte reexamination by the Patent Office, or in the suite of three postissuance review proceedings before the Patent Trial and Appeal Board” (Return Mail, US 2019; e.g., “an accused infringer may challenge validity both in district court and in an inter partes review (IPR)”). It also explained that this case required it “to determine when one pathway, ex parte reexamination, is available to a requester who has repeatedly tried to use another pathway, IPR, to forward the same arguments” but that the PTO “may deny reexamination when ‘the same or substantially the same prior art or arguments previously were presented to the Office,’ 35 U.S.C. § 325(d)”. Alarm filed three IPRs challenging the validity of the ‘513 patent. The PTO declined institution “as an example of ‘undesirable, incremental petitioning’” (“Alarm.com had ‘used prior Board decisions as a roadmap to correct past deficiencies’”) and in denying institution of the ‘091 petition “reasoned that ‘allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress’s intent in enacting the’” AIA. The FC panel explained that “[m]ore than a year later, Alarm.com requested ex parte reexamination of all claims of the ’513 patent” that “[l]argely…repackaged the arguments raised in the ’091 [IPR] petition” (e.g., “vast swaths of the ex parte reexamination request copied, almost word for word, the [IPR] ’091 petition”), but the PTO allowed reexamination based on arguments that include one reference that had been raised in three related IPRs because “the Shetty, Joao, and Garton references are now presented in a new light compared to the earlier examinations and proceedings in view of the material new argument and interpretation presented in the Request.” The PTO dismissed Vivant’s petitions to dismiss the ex parte reeexamination based on the PTO’s position section “325(d) decisions are not reviewable” (e.g., Vivant argued the PTO “could not decline to institute IPR based on abusive filing practices, yet grant reexamination on essentially the same facts”, “acted arbitrarily and capriciously by applying the same law to the same facts and reaching a different conclusion”), after which an examiner issued a final rejection which was appealed and affirmed by the Board. The FC panel found the PTO had the “authority to reconsider its decision ordering ex parte reexamination based on § 325(d)” (Tokyo, FC 2008; Medtronic, FC 2016 (IPRs)) and abused its discretion in not doing so (e.g., it was “arbitrary for the Patent Office to grant reexamination after denying institution of the ’091 IPR based on § 325(d)”). The PTO’s decision, based on 325(d), was therefore vacated and remanded, the FC panel explaining that it is “not holding that the Director may never launch a reexamination even when a particular challenger has engaged in improper serial filing.”