Alarm.com Inc. v. Hirshfeld

Alarm.com Inc. v. Hirshfeld

Opinion

Taranto, Circuit Judge.

In 2015, Alarm.com Incorporated filed petitions in the Patent and Trademark Office (PTO or Patent Office) seeking inter partes reviews (IPRs) under 35 U.S.C. §§ 311-19 of claims of three patents owned by Vivint, Inc. The IPRs were instituted, and the PTO's Patent Trial and Appeal Board in 2017 issued three final written decisions, which rejected Alarm.com's challenges [*2]  to certain claims, a rejection that we affirmed on appeal in late 2018. In mid-2020, Alarm.com filed with the PTO three requests for ex parte reexamination of those very claims under 35 U.S.C. §§ 301-07. The PTO's Director, 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), which, the Director concluded, estopped Alarm.com from pursuing the requests once the IPRs resulted in final written decisions.

Alarm.com sought review of the Director's vacatur decisions in district court under the Administrative Procedure Act (APA), 5 U.S.C. §§ 706(2)(A), (C). The district court dismissed Alarm.com'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. Alarm.com Inc. v. Hirshfeld, No. 1:21-cv-170, 2021 U.S. Dist. LEXIS 116448, 2021 WL 2557948 (E.D. Va. June 22, 2021). On Alarm.com's appeal, we reverse.

Congress created the ex parte reexamination regime in 1980 by adding sections 301 through 307 to Title 35, U.S. Code. Public Law No. 96-517, § 1, 94 Stat. 3015, 3015-17 (1980). ] Under the statute, as amended, "[a]ny person at any time may cite to the [PTO] in writing" certain prior art "which that person believes to have a bearing on the patentability of any claim of a particular patent," 35 U.S.C. § 301(a)(1), as well as certain patent owner [*3]  statements, § 301(a)(2). And "[a]ny person at any time may file a request for reexamination . . . of any claim of a patent on the basis of any prior art cited under [§ 301]." § 302; see also 37 C.F.R. § 1.510. Normally, "[w]ithin three months following the filing of a request for reexamination . . ., the Director will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request." § 303(a). If the Director determines "pursuant to [§ 303(a)] that no substantial new question of patentability has been raised," that determination "will be final and nonappealable." § 303(c). If, however, "the Director finds that a substantial new question of patentability affecting any claim of a patent is raised, the determination will include an order for reexamination of the patent for resolution of the question." § 304.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.