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CAFC Updates


By February 24, 2022No Comments

In 2015, Alarm filed petitions seeking inter partes reviews (IPRs) of claims of three patents owned by Vivint, Inc. The IPRs were instituted, and in 2017 the Board issued three final written decisions, which rejected Alarm’s challenges to certain claims. In mid-2020, Alarm filed three requests for ex parte reexamination of those very claims. The PTO’s Director, without deciding whether the requests presented a “substantial new question of patentability,” vacated the ex parte reexamination proceedings based on the estoppel provision of the IPR regime, which, the Director concluded, estopped Alarm from pursuing the requests once the IPRs resulted in final written decisions. Alarm sought review of the Director’s vacatur decisions in district court under the Administrative Procedure Act (APA), but the district court dismissed Alarm’s complaint on the ground that APA review of the Director’s decision was precluded by the ex parte reexamination scheme viewed as a whole. The CAFC concludes that the legislative history evidence, like the statutory scheme evidence, is too weak to supplant the text and the accompanying presumption of judicial review for the estoppel determination in question, and holds that review of the Director’s estoppel decisions is available to Alarm under the APA. Accordingly, the CAFC reverses the district court’s determination that Alarm’s claims challenging the Director’s decisions to vacate the ex parte reexamination proceedings are precluded and remands for further proceedings.

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