Alarm.com v. Hirshfeld

Decision Date24 February 2022
Docket Number2021-2102
PartiesALARM.COM INCORPORATED, Plaintiff-Appellant v. ANDREW HIRSHFELD, PERFORMING THEFUNCTIONS AND DUTIES OF THE UNDERSECRETARY OF COMMERCE FORINTELLECTUAL PROPERTY AND DIRECTOR OFTHE UNITED STATES PATENT AND TRADEMARKOFFICE, UNITED STATES PATENT ANDTRADEMARK OFFICE, Defendants-Appellees
CourtU.S. Court of Appeals — Federal Circuit

Appeal from the United States District Court for the Eastern District of Virginia in No. 1:21-cv-00170-CMH-TCB, Senior Judge Claude M. Hilton.

Sharonmoyee Goswami, Cravath Swaine & Moore LLP, New York, NY, argued for plaintiff-appellant.

Kevin Benjamin Soter, Appellate Staff, Civil Division, United States Department of Justice, Washington, DC, argued for defendants-appellees. Also represented by Brian M Boynton, Daniel Tenny. Jessica D. Aber, Office of the United States Attorney for the Eastern District of Virginia, United States Department of Justice, Alexandria, VA; Sarah E Craven, Thomas W. Krause, Farheena Yasmeen Rasheed, Meredith Hope Schoenfeld, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA.

Before Taranto, Chen, and Cunningham, Circuit Judges.

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 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 WL 2557948 (E.D. Va. June 22, 2021).

On Alarm.com's appeal, we reverse.

I
A

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 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.

After a reexamination is ordered, the patent owner "may file a statement on [the substantial new question of patentability identified by the Director], including any amendment to his patent and new claim or claims he may wish to propose, for consideration in the reexamination." Id. If the patent owner files such a statement, he must serve a copy of it "on the person who has requested reexamination," who, in turn, "may file and have considered in the reexamination a reply." Id. The statute does not provide for any involvement of the requester in the reexamination after the optional reply. See § 305; see 37 C.F.R. § 1.550(g) ("The active participation of the ex parte reexamination requester ends with the reply . . . and no further submissions on behalf of the reexamination requester will be acknowledged or considered."). The reply aside, the reexamination is "conducted according to the procedures established for initial examination" of patent applications. § 305. Once the reexamination is completed, "[t]he patent owner . . . may appeal . . . any decision adverse to the patentability of any original or proposed amended or new claim of the patent" to the Patent Trial and Appeal Board; and if unsuccessful at the Board, the patent owner may appeal to this court. § 306; §§ 134(b), 141(b); 37 C.F.R. § 90.3(a).

One other provision is central to the issue presented to us-one of the two estoppel provisions of the IPR scheme set out in chapter 31 of Title 35, U.S. Code. The provision at issue here is § 315(e)(1), which states:

The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the [PTO] with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

35 U.S.C. § 315(e)(1). A similar provision, not at issue here, provides for estoppel, on similar terms, of specified civil actions and other proceedings. § 315(e)(2).

B

In 2015, Vivint, Inc. sued Alarm.com for infringement of three patents, U.S. Patent Nos. 6, 147, 601, 6, 462, 654, and 6 535, 123, in the District Court for the District of Utah. See Complaint at 5-10, Vivint, Inc. v. Alarm.com Inc., No. 2:15-cv-00392 (D. Utah June 2, 2015), ECF No. 2. In response, Alarm.com filed numerous petitions for inter partes reviews, which resulted in three final written decisions in 2017, all of which were reviewed by this court in Vivint, Inc. v. Alarm.com Inc., 754 Fed.Appx. 999 (Fed. Cir. 2018). As relevant here, we affirmed the Board's determination that Alarm.com had not carried its burden of proving unpatentable claim 19 of the '601 patent, claim 18 of the '123 patent, and claims 17, 18, 22, 25, and 28 of the '654 patent. Id. at 1006-07 & n.7.

Nevertheless, in June 2020, Alarm.com filed three requests for ex parte reexamination of those very claims under 35 U.S.C. § 302 and 37 C.F.R. § 1.510, presenting grounds that differed from the grounds it had presented in the IPRs. J.A. 109-97 ('601 request); J.A. 199-318 ('123 request); J.A. 320-546 ('654 request). The PTO initially assigned control numbers and filing dates to the requested reexamination proceedings. But on August 7, 2020, the Office of Patent Legal Administration-which we call the Di-rector[1]-issued three decisions vacating the proceedings instead of making § 303(a) determinations on the presence of substantial new questions of patentability. J.A. 45-67 ('601 decision); J.A. 69-90 ('123 decision); J.A. 92-107 ('654 decision).

In each decision, the Director focused on the certification Alarm.com had submitted under 37 C.F.R. § 1.510(b)(6), which requires that a reexamination request include "[a] certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. [§] 315(e)(1) . . . do not prohibit the requester from filing the ex parte reexamination request."[2] The Director set forth a "Clarification of General Policy and Practice" for applying § 315(e)(1)'s estoppel precondition that a particular ground of unpatentability asserted against a particular claim be one that was "raised or reasonably could have [been] raised" in the prior IPR involving the same claim (where the reexamination requester was the IPR petitioner, or a real party in interest or privy of the IPR petitioner). See, e.g., J.A. 55-57. Applying the statute and the General Policy, the Director found that Alarm.com reasonably could have raised its reexamination grounds in the IPRs and so was estopped under § 315(e)(1) from submitting each of its ex parte reexamination requests, a conclusion that made the certifications under 37 C.F.R. § 1.510 incorrect. See, e.g., J.A. 52-65. On that basis, the Director vacated the filing dates of each request, as well as each proceeding as a whole. See, e.g., J.A. 65-66 (citing 37 C.F.R. § 1.510(d); MPEP § 2227(b)). The Director did not conclude that Alarm.com's requests failed to raise a "substantial new question of patentability." See § 303(a).

On February 12, 2021, Alarm.com filed a complaint in the United States District Court for the Eastern District of Virginia against the Director, in his official capacity, and the PTO. Alarm.com filed its complaint under the APA, which provides that "[a] person suffering legal wrong because of agency action, or adversely affected or aggrieved by agency action within the meaning of a relevant statute, is entitled to judicial review thereof." 5 U.S.C. § 702. Alarm.com asserted that the Director's three decisions vacating each ex parte reexamination proceeding were final agency actions and were unlawful and should be set aside because the actions or underlying findings or conclusions were "arbitrary, capricious, an abuse of discretion, or...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT