Alarm.com Incorporated v. USPTO
Docket No. 2021-2102 (https://cafc.uscourts.gov/opinions-orders/21-2102.OPINION.2-24-2022_1913344.pdf)
TARANTO, CHEN, CUNNINGHAM
February 24, 2021
Brief Summary: DC decision dismissing Alarm.com’s ex parte reexamination requests following IPR FWDs of the same claims reversed and remanded as PTO did not decide “whether the requests presented a ‘substantial new question of patentability’”. Summary: In 2015, Alarm.com filed IPRs against three Vivint patents (6,147,601; 6,462,654; and 6,535,123) that each resulted in final written decisions (FWDs) in 2017 rejecting the challenges to some claims that were each affirmed by the FC in 2018. In mid-2020, Alarm.com filed three requests for ex parte reexamination of the same claims (35 USC section 301-07) which were dismissed by the PTO “‘without deciding whether the requests presented a ‘substantial new question of patentability,’ § 303(a), vacated the ex parte reexamination proceedings based on the estoppel provision of the IPR regime, § 315(e)(1)” (“the estoppel provision of the IPR regime, § 315(e)(1)…estopped Alarm.com from pursuing the requests once the IPRs resulted in final written decisions”). Alarm.com’s complaint was dismissed by the DC (UT) as “precluded by the ex parte reexamination scheme viewed as a whole.” The FC panel explained in an ex parte reexamination, “[i]f the Director determines ‘pursuant to [§ 303(a)] that no substantial new question of patentability has been raised,’ that determination ‘will be final and nonappealable’” (sections 303(c) and 304). If reexamination is ordered, the patent owner may file a statement and the person who filed the request may optionally reply and is then not involved in the proceeding, and the PTO’s decision may be appealed to the PTAB or FC by the patent owner. The FC panel concluded that “Alarm.com’s APA challenge to the Director’s vacatur decisions based on estoppel is not precluded” as “[t]he text, statutory scheme, and legislative history pertaining to ex parte reexamination do not evince a fairly discernable intent to preclude judicial review of these decisions.” In this case, “[t]he Director’s estoppel determinations did not include any determination that no substantial new question of patentability had been raised” and “[t]he estoppel determinations made under § 315(e)(1) here are outside the scope of § 303(c).” The FC panel reviewed prior SCOTUS and FC decision supporting its position, finally “reject[ing] the government’s contention that the ex parte reexamination statutory scheme provides clear and convincing evidence that Congress intended to preclude judicial review of determinations like this one, not expressly barred by § 303(c).” The FC panel explained that “Congress enacted the America Invents Act (AIA), which included § 315(e)(1), and yet it chose to make no substantive modification to § 303(c).” The DC decision was therefore reversed in part (e.g., the FC did not reach standing) and remanded.