Intellectual Property News and Reports

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.

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