United States: Ex Parte Reexamination Scheme Did Not Preclude Review Of Director's Decision To Vacate Reexamination Proceedings Based On IPR Estoppel

In Alarm.com Inc. v. Hirshfeld, No. 21-2102 (Fed. Cir. Feb. 24, 2022), the Federal Circuit reversed the district court's determination that it lacked jurisdiction to resolve Alarm.com's challenge to the Director's decision to vacate three ex parte reexaminations in light of IPR estoppel.

In 2015, Vivint sued Alarm.com for allegedly infringing three of its patents. Alarm.com filed IPR petitions challenging those patents. And in 2017, the PTAB issued final written decisions finding Alarm.com failed to show challenged claims were unpatentable. Those decisions were affirmed by the Federal Circuit in 2018.

Two years later, Alarm.com filed requests for ex parte reexamination challenging those same claims. Without making a determination on whether the requests presented a substantial new question of patentability, the Director vacated the three proceedings. The Director reasoned that Alarm.com was estopped under 35 U.S.C. § 315(e)(1) from submitting the grounds raised in its requests. Alarm.com then filed a complaint in the Eastern District of Virginia, seeking review of the Director's vacatur decisions. The district court dismissed Alarm.com's complaint for lack of jurisdiction. In the court's view, Alarm.com's challenge to the vacatur decisions was precluded by the ex parte reexamination statutory scheme.

On appeal, the Federal Circuit reversed. The Federal Circuit reasoned that the relevant ex parte reexamination provision, 35 U.S.C. § 303(c), only expressly precludes review of a determination by the Director that "no substantial new question of patentability has been raised." Because the Director's vacatur decisions in this case—which turned on the application of IPR estoppel—did not make a determination on a "substantial new question of patentability," they were not subject to the "sole express textual preclusion in the ex parte reexamination scheme." The Court stated this aligned with the Supreme Court's Thryv decision,  which found § 303(c) was limited in scope compared to the broader IPR preclusion provision. And it declined to adopt the government's argument that the ex parte reexamination scheme illustrates "a congressional intent to deprive requesters like Alarm.com of all rights of judicial review."

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