In Re Vivint, Inc., No. 20-1992 (Fed. Cir. 2021)
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Vivint sued Alarm.com for infringement of the 513 patent. Alarm.com unsuccessfully requested inter partes review (IPR). Later, Alarm.com requested ex parte reexamination of the 513 patent, repackaging its arguments. The Patent Office ordered reexamination, finding that Alarm.com had raised substantial new questions of patentability despite the prior IPRs, reasoning that references to prior art had been presented in a new light. Vivint argued that the Patent Office has authority to deny reexamination under 35 U.S.C. 325(d) because that statute applies to ex parte reexaminations and IPRs equally and that each factor applicable to exercising its discretion under section 325(d) counseled in favor of dismissal. In Vivint’s view, the Patent Office could not decline to institute IPR based on abusive filing practices, yet grant reexamination on essentially the same facts. The Patent Office disagreed, holding that a petition raising 35 U.S.C. 325(d) must be filed before reexamination is ordered. Ultimately, an examiner issued a final rejection for all claims of the 513 patent.
The Federal Circuit vacated. The Patent Office must find a “substantial new question of patentability” before ordering reexamination, 35 U.S.C. 303(a), and it may deny reexamination when “the same or substantially the same prior art or arguments previously were presented to the Office,” section 325(d) While the ex parte reexamination, in this case, was based on substantial new questions of patentability, the Patent Office abused its discretion and acted arbitrarily and capriciously under section 325(d).
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