In Re VIVINT, INC.

Case: 20-1992 Document: 39 Page: 1 Filed: 09/29/2021
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: VIVINT, INC.,
Appellant
______________________
2020-1992
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/020,115.
______________________
Decided: September 29, 2021
______________________
WILLIAM MILLIKEN, Sterne Kessler Goldstein & Fox,
PLLC, Washington, DC, argued for appellant. Also repre-
sented by JASON DANIEL EISENBERG, ROBERT GREENE
STERNE.
ROBERT J. MCMANUS, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Andrew Hirshfeld. Also represented by
THOMAS W. KRAUSE, MAUREEN DONOVAN QUELER,
FARHEENA YASMEEN RASHEED.
______________________
Before MOORE, Chief Judge, SCHALL and O’MALLEY,
Circuit Judges.
MOORE, Chief Judge.
In 2011, Congress passed the Leahy-Smith America In-
vents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284 (codified
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2 IN RE: VIVINT, INC.
in scattered sections of title 35). Overhauling the patent
system, Congress created new ways to reexamine the va-
lidity 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 reexami-
nation 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 path-
ways to challenge validity. For example, an accused in-
fringer 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 or-
dering 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 Of-
fice,” 35 U.S.C. § 325(d). 1 While the ex parte reexamination
in this case was based on substantial new questions of pa-
tentability, the Patent Office abused its discretion and
1 Both statutes refer to the Patent Office’s Director.
35 U.S.C. §§ 303(a) (“[T]he Director will determine whether
. . . .”), 325(d) (“[T]he Director may . . . reject the petition
. . . .”). But the Director has delegated the § 303(a) inquiry
to examiners. See 37 C.F.R. § 1.515. And the Office of Pa-
tent Legal Administration (OPLA), a subset of the Patent
Office, resolved Vivint’s petitions that raised § 325(d). See
37 C.F.R. § 1.181(a) (allowing for petitions invoking the Di-
rector’s supervisory authority), 1.181(g) (allowing for dele-
gation of review of such petitions). The parties treat each
entity as an arm of the Patent Office, and we do the same.
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IN RE: VIVINT, INC. 3
acted arbitrarily and capriciously under § 325(d). Thus, we
vacate and remand with instructions for the Patent Office
to dismiss. 2
BACKGROUND
In 2015, Vivint sued Alarm.com for infringing four pa-
tents, including U.S. Patent No. 6,717,513. While defend-
ing itself in district court, Alarm.com requested the Patent
Office institute a litany of post-issuance review proceed-
ings. In total, Alarm.com filed fourteen IPR petitions.
Three of those petitions—IPR2015-01997, IPR2016-00129,
and IPR2016-01091—challenged the validity of claims in
the ’513 patent, which is the only patent at issue here.
The Patent Office ultimately declined to institute IPR
for the ’513 patent. For the ’997 and ’129 petitions, the Pa-
tent Office determined that Alarm.com failed to make the
threshold showing for institution: a reasonable likelihood
that it would prevail on at least one challenged claim. See
35 U.S.C. § 314(a). For the ’091 petition, however, the Pa-
tent Office declined institution on a different basis. It
viewed the ’091 petition as an example of “undesirable, in-
cremental petitioning.” Alarm.com Inc. v. Vivint, Inc.,
IPR2016-01091, Paper 11, at 12 (P.T.A.B. Nov. 23, 2016)
(’091 Decision). Alarm.com had “used prior Board decisions
as a roadmap to correct past deficiencies.” Id. And the Pa-
tent Office reasoned that “allowing similar, serial chal-
lenges to the same patent, by the same petitioner, risks
harassment of patent owners and frustration of Congress’s
intent in enacting the Leahy-Smith America Invents Act.”
Id. (internal quotation marks and alterations omitted). To
discourage such petitioning, the Patent Office exercised its
discretion to deny institution for the ’091 petition. Id.2 Vivint waived its Appointments Clause challenge,
so we need not remand on that basis.
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4 IN RE: VIVINT, INC.
More than a year later, Alarm.com requested ex parte
reexamination of all claims of the ’513 patent. Largely, this
request repackaged the arguments raised in the ’091 peti-
tion. Alarm.com presented four questions of patentability
for the Patent Office to review:
J.A. 70. Two of those questions came directly from the ’091
petition. In fact, vast swaths of the ex parte reexamination
request copied, almost word for word, the ’091 petition.
Compare J.A. 84–125, 132–36, with Alarm.com Inc. v.
Vivint, Inc., IPR2016-01091, Paper 1, at 16–57, 64–67
(P.T.A.B. May 24, 2016). For the two other questions,
which related only to claim 14, Alarm.com replaced a ref-
erence cited in the ’091 petition, Britton, with another ref-
erence, Cheng. But it did so only after the Patent Office
had addressed Britton in three related IPRs.
Based on Alarm.com’s request, the Patent Office or-
dered reexamination for all claims of the ’513 patent. It
concluded that Alarm.com had raised substantial new
questions of patentability despite the prior IPRs:
[The Patent Office] notes that the Shetty, Joao, and
Garton references are now presented in a new light
compared to the earlier examinations and proceed-
ings in view of the material new argument and in-
terpretation presented in the Request.
Accordingly, the use of these references in this
reexamination is proper.
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IN RE: VIVINT, INC. 5
J.A. 982. The Patent Office did not, however, cite § 325 or
discuss its discretion under that provision. See J.A. 976–
84.
Vivint then petitioned the Patent Office under 37
C.F.R. § 1.181, seeking dismissal of the ex parte reexami-
nation. It argued that the Patent Office has authority to
deny reexamination under § 325(d) because that statute
applies to ex parte reexaminations and IPRs with equal
force. It also argued that each factor the Patent Office uses
when exercising its discretion under § 325(d) counseled in
favor of dismissal. 3 Finally, 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 dismissed Vivint’s petition, holding
that any § 1.181 petition raising 35 U.S.C. § 325(d) must be
filed before reexamination is ordered. Based on §§ 304,
305, and 325(d), the Patent Office reasoned that it had no
authority to consider petitions filed after reexamination
was ordered. While that reasoning drove the Patent Of-
fice’s dismissal, the Patent Office also “provide[d] addi-
tional comments . . . in order to clarify [its] policy” on
several points. J.A. 10847.
In a second petition under § 1.181, Vivint sought recon-
sideration of the § 325(d) issue. It argued that raising
§ 325(d) in a petition would have been impossible before ex
parte reexamination was ordered, so the Patent Office
should not have faulted Vivint for its timing. And Vivint
argued that, even if the Patent Office generally lacks au-
thority to terminate a reexamination, it had authority to do
so in this case under the Administrative Procedure Act
3 Although Vivint purported to discuss factors relat-
ing to § 325(d), it actually discussed the eight § 314(a) fac-
tors.
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6 IN RE: VIVINT, INC.
(APA). Vivint also claimed the Patent Office acted arbi-
trarily and capriciously by applying the same law to the
same facts and reaching a different conclusion.
The Patent Office denied Vivint’s second § 1.181 peti-
tion. It reasoned that, though Patent Office rules pre-
vented Vivint from filing a § 1.181 petition before ex parte
reexamination was ordered, Vivint could have sought
waiver of those rules. Also, the Patent Office rejected
Vivint’s APA arguments, viewing them as an attempt to
circumvent statutory limits. Likewise, the Patent Office
explained how granting ex parte reexamination was not in-
consistent with denying IPR. It contrasted the statutory
frameworks used to make each decision. And it reasoned
that, even if the IPR was denied based solely on § 325(d)
considerations, the differences between ex parte reexami-
nation and IPR could justify such an outcome. But, like the
first petition, the Patent Office’s ultimate decision focused
on the timing of Vivint’s petition as the basis for denying
relief. J.A. 12217.
Ultimately, an examiner issued a final rejection for all
claims of the ’513 patent, and Vivint appealed to the Board.
The Board affirmed. In doing so, it held that Alarm.com’s
request raised substantial new questions of patentability,
but it did not address § 325(d). Vivint appeals. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
“We review the Board’s decisions under the standard[s]
set forth in the [APA].” Alacritech, Inc. v. Intel Corp., 966
F.3d 1367, 1370 (Fed. Cir. 2020). Those standards require
us to “decide all relevant questions of law” and to set aside
agency actions that are “arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law.” 5
U.S.C. § 706. Our review under the APA is not limited to
the four corners of a final agency action; we may also re-
view “preliminary, procedural, or intermediate agency
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IN RE: VIVINT, INC. 7
action[s] or ruling[s]” that are “not directly reviewable” be-
fore a final action. 5 U.S.C. § 704.
I
To order reexamination, the Patent Office must iden-
tify a “substantial new question of patentability.” 35
U.S.C. § 303(a). Vivint challenges the Patent Office’s out-
come on that score, which is a question of law that we re-
view without deference. See In re Swanson, 540 F.3d 1368,
1381 (Fed. Cir. 2008) (“[T]he ultimate question of whether
the reexamination is based on a substantial new question
of patentability . . . remains a question of law.”). 4 Vivint
argues that, because the ex parte reexamination request re-
packaged arguments in the ’091 petition, it did not present
a new question of patentability. We do not agree.
A
The text of § 303(a) provides little guidance on the
meaning of the word new in the phrase “substantial new
question of patentability”:
Within three months following the filing of a re-
quest for reexamination under the provisions of
section 302, the Director will determine whether a
substantial new question of patentability affecting
any claim of the patent concerned is raised by the
request, with or without consideration of other pa-
tents or printed publications. On his own initiative,
and any time, the Director may determine whether
a substantial new question of patentability is raised
4 While the substantial-new-question inquiry may
involve underlying fact questions, which we would review
for substantial evidence, we see no such questions here.
See In re Swanson, 540 F.3d at 1381 (holding the scope of
an examiner’s prior consideration of a reference is a ques-
tion of fact).
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8 IN RE: VIVINT, INC.
by patents and publications discovered by him or
cited under the provisions of section 301 or 302.
The existence of a substantial new question of pa-
tentability is not precluded by the fact that a patent
or printed publication was previously cited by or to
the Office or considered by the Office.
(emphasis added). It neither defines the word new nor pro-
vides examples of questions of patentability that would
qualify as new.
The broader statutory context, however, clarifies that
a question of patentability is new until it has been consid-
ered and decided on the merits. See, e.g., Home Depot
U.S.A., Inc. v. Jackson, 139 S. Ct. 1743, 1748 (2019) (“[T]he
words of a statute must be read in their context and with a
view to their place in the overall statutory scheme.”). The
Patent Office has discretion to deny an ex parte reexamina-
tion request that raises an argument that has been previ-
ously presented to it:
In determining whether to institute or order a pro-
ceeding under . . . [§ 303(a)] . . . , the Director may
take into account whether, and reject the petition
or request because, the same or substantially the
same prior art or arguments previously were pre-
sented to the Office.
35 U.S.C. § 325(d) (emphasis added). That discretion
would be meaningless if a question of patentability was not
new simply because it had been previously presented to the
Patent Office. Therefore, more is required for a question of
patentability to no longer be new; the Patent Office must
have considered and decided that question on the merits.
While not binding on this court, the Manual of Patent
Examining Procedure (MPEP) supports that conclusion.
MPEP § 2242(I) defines the word new in § 303(a) by de-
scribing the three circumstances in which a question is not
new:
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IN RE: VIVINT, INC. 9
a substantial new question of patentability as to
the claim is present, unless the same question of
patentability has already been: (A) decided in a fi-
nal holding of invalidity by a federal court in a de-
cision on the merits involving the claim, after all
appeals; (B) decided in an earlier concluded exami-
nation or review of the patent by the Office; or
(C) raised to or by the Office in a pending reexami-
nation or supplemental examination of the patent.
(emphasis in original). In the first two cases, “the same
question of patentability” must have “already been . . . de-
cided” by the Patent Office, not merely raised to or consid-
ered by that office. Id. While the last category does include
questions “raised to” the Patent Office, it is limited to ques-
tions in “pending reexamination[s] or supplemental exam-
ination[s].” Id. (emphasis added). In those cases, the
Patent Office is currently considering the question of pa-
tentability on the merits, which prevents it from being new.
Vivint focuses on another portion of MPEP § 2242(I),
which defines the phrase “an earlier concluded examina-
tion or review.” It argues that a catchall category in that
definition—“any other contested [Patent] Office proceeding
which has been concluded and which involved the pa-
tent”—includes decisions denying institution. Even as-
suming that conclusion, a question must have been
“decided in an earlier concluded examination,” not merely
raised to the Patent Office, in order to meet § 2242(I)’s
plain terms. Ultimately, nothing Vivint points to in the
MPEP undermines our holding that a question of patenta-
bility is new until it has been considered and decided on
the merits.
B
Alarm.com’s request raised four questions of patenta-
bility, and we hold each of those questions was new under
§ 303(a). In each case, the Patent Office has never consid-
ered the relevant question of patentability on the merits.
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10 IN RE: VIVINT, INC.
Vivint’s core argument is that “the invalidity chal-
lenges raised in Alarm.com’s reexamination request had al-
ready been considered and rejected by the Board in the”
’091 Decision. Appellant’s Br. at 18, 20. But that argument
is twice flawed. First, the ’091 petition did not raise two of
the four questions of patentability raised in the ex parte
reexamination request. In the ex parte reexamination re-
quest, Alarm.com challenged the patentability of claim 14
on two bases, both of which relied on the Cheng reference.
But neither of those bases had been presented to the Patent
Office before. Nor had the Patent Office ever considered
the patentability of claim 14 in light of Cheng. That, alone,
renders the claim 14 questions new.
Second, the Patent Office never considered or decided
the questions of patentability raised in the ’091 petition. To
be sure, the ’091 petition presented several questions of pa-
tentability, two of which were identical to questions raised
in the ex parte reexamination request. But the Patent Of-
fice may deny institution without resolving any questions
of patentability. See, e.g., 35 U.S.C. § 325(d). And that is
precisely what the Patent Office did in the ’091 Decision; it
relied on Alarm.com’s abusive filing practices to deny insti-
tution. The Patent Office did not decide the questions of
patentability raised in the ’091 petition. Instead, it found
Alarm.com’s serial filing to amount to an abuse of process
and, therefore, refused to address the merits of the patent-
ability arguments. Thus, we hold the ex parte reexamina-
tion in this case was based on substantial new questions of
patentability.
II
Even when an ex parte reexamination request presents
a substantial new question of patentability, the Patent Of-
fice “may . . . reject the . . . request because the same or
substantially the same prior art or arguments previously
were presented to” it. 35 U.S.C. § 325(d). Vivint contends
the Patent Office abused its discretion and acted
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IN RE: VIVINT, INC. 11
arbitrarily and capriciously by ordering reexamination,
and thereafter, refusing to terminate that proceeding. We
agree.
A
Initially, we reject the government’s argument that
§ 325(d) decisions are not reviewable. See Appellee’s Br. at
31–33. 5 At base, the government argues § 325(d) decisions
are committed to agency discretion based on that statute’s
permissive language. But permissive language, alone, does
not render a question committed to agency discretion un-
der 5 U.S.C. § 701(a)(2). See, e.g., Dickson v. Sec’y of Def.,
68 F.3d 1396, 1401 (D.C. Cir. 1995). “As we have held,
§ 701(a)(2) provides a very narrow exception to the pre-
sumption of judicial review, and is applicable only in those
rare instances where statutes are drawn in such broad
terms that in a given case there is no law to apply.” Hon-
eywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1348 (Fed.
Cir. 2019) (quotation marks omitted). We are not per-
suaded that § 325(d) meets that taxing standard.
Accordingly, we review the Patent Office’s § 325(d) de-
cision under the APA. See 5 U.S.C. § 706. Under the APA,
we must set aside an agency action that is either an abuse
of discretion or arbitrary and capricious. Id. § 706(2)(A).
Agency action is an abuse of discretion when it “(1) is
clearly unreasonable, arbitrary, or fanciful; (2) is based on
an erroneous conclusion of law; (3) rests on clearly
5 Under 35 U.S.C. § 303(c), “[a] determination by the
Director pursuant to subsection (a) of this section that no
substantial new question of patentability has been raised
will be final and nonappealable.” The Director does not in-
voke that provision here, for good reason. The provision
does not apply to a determination that a substantial new
question of patentability has been raised, and it does not
apply to a determination under 35 U.S.C. § 325(d).
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12 IN RE: VIVINT, INC.
erroneous fact findings; or (4) involves a record that con-
tains no evidence on which the [agency] could rationally
base its decision.” Honeywell, 939 F.3d at 1348. A decision
is arbitrary and capricious when the agency fails to articu-
late a “rational connection between the facts found and the
choice made.” Motor Vehicle Mfrs. Ass’n of U.S., Inc. v.
State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983).
B
Here, we must set aside the Patent Office’s § 325(d) de-
termination. A legal error—the Patent Office’s narrow in-
terpretation of its authority to reconsider orders granting
reexamination—infected that determination. And, in light
of the ’091 Decision, it was arbitrary and capricious for the
Patent Office to order reexamination over § 325(d), or, at
minimum, refuse to terminate reexamination once Vivint
requested it do so. Because the Patent Office should not
have ordered reexamination, we vacate and remand with
instructions to dismiss.
1
In dismissing and denying Vivint’s § 1.181 petitions,
the Patent Office relied primarily on its alleged lack of au-
thority to terminate an ex parte reexamination. See J.A.
10847. We do not agree with the Patent Office’s assess-
ment of its authority. The Patent Office has authority to
reconsider its decision ordering ex parte reexamination
based on § 325(d). “The power to reconsider is inherent in
the power to decide.” Tokyo Kikai Seisakusho, Ltd. v.
United States, 529 F.3d 1352, 1360 (Fed. Cir. 2008). We
have applied that principle to hold the Patent Office has
authority to reconsider IPR institution decisions. See, e.g.,
Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839
F.3d 1382, 1385 (Fed. Cir. 2016); cf. GTNX, Inc. v. INTTRA,
Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015). We reasoned
that “nothing in the statute or regulations applicable [to
CBMs] clearly deprives the Board of that default author-
ity.” GTNX, Inc., 789 F.3d at 1313. And we likewise see
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IN RE: VIVINT, INC. 13
nothing in the statutes or regulations preventing the Pa-
tent Office from reconsidering a decision ordering ex parte
reexamination. See, e.g., 35 U.S.C. §§ 301–07 (governing
ex parte reexamination); 37 C.F.R. § 1.183 (allowing for
waiver of Patent Office rules). Thus, the Patent Office
abused its discretion by denying Vivint’s § 1.181 petitions
based on a contrary legal conclusion: that the Patent Office
did not have authority to consider those petitions.
While the Patent Office purported to consider Vivint’s
§ 325(d) arguments on the merits, its legal error infected
that analysis. In its first § 1.181 decision, the Patent Office
held that it did “not have the discretion to terminate an
ongoing reexamination on the basis set forth in 35 U.S.C.
[§] 325(d) if no petition requesting such relief is filed until
after reexamination has been ordered.” J.A. 10847 (empha-
sis in original). And that holding drove the Patent Office’s
dismissal decision. See J.A. 10856. The remainder of the
first decision included “additional comments . . . in order to
clarify [Patent] Office policy,” but those comments were
tangential to the Patent Office’s decision. J.A. 10847. In-
deed, the Patent Office reincorporated its erroneous legal
conclusion into its policy conclusions. J.A. 10853 (“For all
of the reasons set forth above, the determination by the
[Patent] Office not to exercise its discretion under
[§ 325(d)] in the present ex parte reexamination proceeding
is not inconsistent with [IPR] practice.” (emphasis added)).
The Patent Office’s second § 1.181 decision proceeded
in much the same way. See J.A. 12210–19. The Patent
Office stressed that Vivint “had the opportunity . . . to file
a petition limited to issues involving 35 U.S.C. [§] 325(d)
prior to the issuance of the order for reexamination, but
chose not to do so.” J.A. 12213, 12217. And it faulted
Vivint for failing to seek waiver of the Patent Office rules
that prevented such a filing. To be sure, the second § 1.181
decision mentioned Vivint’s § 325(d) arguments. And the
Patent Office concluded that it had “reviewed the record
and declined to reject the request [for ex parte
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14 IN RE: VIVINT, INC.
reexamination] under [§ 325(d)]” at the outset of the ex
parte reexamination. J.A. 12217. But at the same time,
the Patent Office again relied on its erroneous legal conclu-
sion: “that once the [ex parte reexamination] order has is-
sued, the Office is required by statute to conduct
reexamination.” J.A. 12217. And like its decision on the
first § 1.181 petition, the Patent Office incorporated its le-
gal error into its ultimate conclusion. J.A. 12217 (“For all
the reasons set forth above, patent owner’s [petition] is de-
nied.” (emphasis omitted)). 6
2
Our finding that the Patent Office misunderstood the
scope of its authority to terminate reexamination once in-
stituted would normally prompt us to vacate the Patent Of-
fice’s decision so that it may exercise the authority as now
properly understood. Doing so in this case would be a
waste of everyone’s resources, however. It would be arbi-
trary and capricious for the Patent Office to do anything on
remand other than terminate the reexamination. Agency
action that “departs from established precedent without a
reasoned explanation [is] arbitrary and capricious.” Fred
Beverages, Inc. v. Fred’s Cap. Mgmt. Co., 605 F.3d 963, 967
(Fed. Cir. 2010) (holding Trademark Trial and Appeal
Board acted arbitrarily by denying leave when “[t]here
[wa]s no basis on which to distinguish the circumstances of
the present case from those in which” leave was granted).
After the ’091 Decision, it was unreasonable for the Patent
6 The government argues Vivint identified no basis
for the Patent Office to use its discretionary power of re-
consideration. But avoiding arbitrary and capricious con-
duct, see infra at 14–16, is certainly a valid basis for
reconsideration.
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IN RE: VIVINT, INC. 15
Office to order reexamination, and, once ordered, to refuse
to terminate it.
The ’091 Decision focused on Alarm.com’s abusive fil-
ing practices. The Patent Office viewed the ’091 petition as
“a case of undesirable, incremental petitioning.” ’091 Deci-
sion at 12. And it noted how it regularly denies petitions,
both in IPRs and in other post-issuance review proceed-
ings, when petitioners “have used prior Board decisions as
a roadmap to correct past deficiencies.” Id. The Patent Of-
fice did discuss the Board’s limited resources, but only in
the context of Alarm.com’s abusive filing practices. Id. at
13–14 (quoting LG Elecs. Inc. v. Core Wireless Licensing
S.A.R.L., No. IPR2016-00986, Paper 12, at 6–7 (P.T.A.B.
Aug. 22, 2016)). Likewise, the Patent Office focused on
Alarm.com’s filing practices when discussing the remain-
ing § 314(a) factors. Id. at 9 (noting, when discussing factor
3, that the ’091 petition was Alarm.com’s third petition), 10
(discussing the ’091 petition’s timing, which allowed
Alarm.com to use related IPRs as a roadmap to fix deficien-
cies).
Though the Patent Office ostensibly applied § 314(a) to
deny institution, it actually relied on § 325(d) considera-
tions for its core analysis. See id. at 11–12 (citing and ap-
plying § 325(d)). It reasoned that “allowing similar, serial
challenges to the same patent, by the same petitioner, risks
harassment of patent owners and frustration of Congress’s
intent in enacting the [AIA].” Id. at 12 (citation omitted)
(emphasis added). That is the heart of a § 325(d) analysis.
And the Patent Office explicitly placed that reasoning
within the § 325(d) framework:
[I]n making the determination whether Peti-
tioner’s current challenges present the same or
substantially the same art or arguments as those
previously presented to the Office, we may consider
whether Petitioner uses information gleaned from
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16 IN RE: VIVINT, INC.
our earlier decisions to bolster challenges it ad-
vanced unsuccessfully.
Id. at 11–12. Fundamentally, the ’091 decision denying in-
stitution relied on a § 325(d) analysis.
Rather than learn its lesson, however, Alarm.com con-
tinued to engage in abusive filing practices after the ’091
Decision. It copied, word-for-word, two grounds from the
’091 petition—the very petition deemed “a case of undesir-
able, incremental petitioning”—into its ex parte reexami-
nation request. And for the portions it did not copy,
Alarm.com “used prior Board decisions as a roadmap to cor-
rect past deficiencies.” ’091 Decision at 12. Indeed, the ex
parte reexamination request was a more egregious abuse
than the ’091 petition under the same considerations al-
ready analyzed by the Board. The ’091 petition was the
third filing in a string of “undesirable, incremental peti-
tioning” practices. Id. And Alarm.com’s ex parte reexami-
nation request was another, fourth iteration of
Alarm.com’s abuse of process. It was, therefore, arbitrary
for the Patent Office to grant reexamination after denying
institution of the ’091 IPR based on § 325(d).
The government argues that, because IPR and ex parte
reexamination involve different procedures and policies,
the Patent Office is free to grant an “undesirable, incre-
mental” ex parte reexamination request even after it denies
a nearly identical IPR petition that was deemed “a case of
undesirable, incremental petitioning.” We do not agree.
Our holding today is narrow. Section 325(d) applies to both
IPR petitions and requests for ex parte reexamination.
Thus, the Patent Office, when applying § 325(d), cannot
deny institution of IPR based on abusive filing practices
then grant a nearly identical reexamination request that is
even more abusive. We see no difference between the IPR
and ex parte reexamination processes that would justify
such conduct and nothing short of termination of the reex-
amination would be appropriate.
Case: 20-1992 Document: 39 Page: 17 Filed: 09/29/2021
IN RE: VIVINT, INC. 17
Our ruling today is limited. As the Director notes as
part of his argument about the difference in character be-
tween the ex parte reexamination regime and the IPR re-
gime, there can be a public interest in reexamination that
goes beyond the interests, or propriety of behavior, of a par-
ticular challenger. That is reflected most expressly in the
statute’s grant to the Director of the authority to launch an
ex parte reexamination “[o]n his own initiative.” 35 U.S.C.
§ 303(a) (“On his own initiative, and any time, the Director
may determine whether a substantial new question of pa-
tentability is raised by patents and publications discovered
by him or cited under the provisions of section 301 or 302.”);
see 37 C.F.R. § 1.520 (providing for Director’s “own initia-
tive” authority). Section 303(a) makes clear that the Direc-
tor’s “own initiative” authority provides a separate,
supplemental path to an ex parte reexamination, beyond
the § 302 “request” path, even where there is a § 302 re-
quest: the statute, as amended in 2011, expressly permits
a Director’s “own initiative” decision to rely on information
supplied in a request “under the provisions of section
. . . 302.” 35 U.S.C. § 303(a); see SAS Inst. Inc. v. Iancu,
138 S. Ct. 1348, 1355 (2018) (“In the ex parte reexamina-
tion statute, Congress embraced an inquisitorial approach,
authorizing the Director to investigate a question of pa-
tentability ‘[o]n his own initiative, and at any time.’
§ 303(a).”). Notably, too, the second sentence of § 325(d),
the basis for the discretion at issue in this case, does not
apply to such “own initiative” authority; it applies only to
a “petition or request,” which the Director may “reject” be-
cause of serial filings of a challenger. 35 U.S.C. § 325(d).
The Director in this case, however, did not invoke the “own
initiative” authority. Nor, apart from the “own initiative”
authority, did he set forth a reasoned basis for exercising
his § 325(d) discretion to launch the ex parte reexamination
even accepting that Alarm.com was engaging in continua-
tion of its abusive serial filing. Accordingly, we are not
holding that the Director may never launch a
Case: 20-1992 Document: 39 Page: 18 Filed: 09/29/2021
18 IN RE: VIVINT, INC.
reexamination even when a particular challenger has en-
gaged in improper serial filing.
CONCLUSION
While the ex parte reexamination in this case was
based on substantial new questions of patentability, we
must set aside the Patent Office’s § 325(d) decision under
the APA. That decision was an abuse of discretion and was
arbitrary and capricious. Therefore, the Patent Office
should not have ordered reexamination, or, at minimum,
should have terminated the reexamination once Vivint re-
quested that it do so. Accordingly, we vacate and remand
with instructions for the Patent Office to dismiss.
VACATED AND REMANDED
COSTS
No costs.