SRI International, Inc. v. Cisco Systems, Inc.
Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd.

In Re Vivint, Inc.

In 2011, Congress passed the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284 (codified in scattered sections of title 35). Overhauling the patent system, Congress created new ways to reexamine the validity of issued patents. See id. “[I]n the post-AIA world, a patent can be reexamined either in federal court during a defense to an infringement action, in an ex parte reexamination by the Patent Office, or in the suite of three post-issuance review proceedings before the Patent Trial and Appeal Board.” Return Mail, Inc. v. U.S. Postal Serv., 139 S. Ct. 1853, 1860 (2019). Often, parties use multiple pathways to challenge validity. For example, an accused infringer may challenge validity both in district court and in an inter partes review (IPR), one of the three post-issuance review proceedings.

This case requires us to determine when one pathway, ex parte reexamination, is available to a requester who has repeatedly tried to use another pathway, IPR, to forward the same arguments. By statute, 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,” 35 U.S.C. § 325(d).1 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 § 325(d). Thus, we vacate and remand with instructions for the Patent Office to dismiss.

Download In Re Vivint Inc.

Patent

Registering your trademarks is one of the best long-term investments you can make in your business. Contact us today for more information.

Visit Gehrke & Associates, SC.

Comments

Verify your Comment

Previewing your Comment

This is only a preview. Your comment has not yet been posted.

Working...
Your comment could not be posted. Error type:
Your comment has been saved. Comments are moderated and will not appear until approved by the author. Post another comment

The letters and numbers you entered did not match the image. Please try again.

As a final step before posting your comment, enter the letters and numbers you see in the image below. This prevents automated programs from posting comments.

Having trouble reading this image? View an alternate.

Working...

Post a comment

Comments are moderated, and will not appear until the author has approved them.

Your Information

(Name is required. Email address will not be displayed with the comment.)