Background
This case arose from a long-running patent dispute between Alarm.com and home security company Vivint. In 2015, Vivint sued Alarm.com for infringing three of its patents. Alarm.com fought back through the inter partes review (IPR) system, filing IPR petitions in 2017, but the Patent Trial and Appeal Board (PTAB) upheld all three patents—and the Federal Circuit affirmed.
Not giving up, Alarm.com in 2020 filed three requests for ex parte reexamination of the same patents, this time using prior art references it had not raised in the IPRs. The USPTO Director (then Andrew Hirshfeld, acting in an interim capacity) vacated each request. Rather than analyzing whether the new art raised a “substantial new question of patentability” under 35 U.S.C. § 303, the Director applied IPR estoppel under § 315(e)(1), reasoning that Alarm.com reasonably could have raised its reexamination grounds during its earlier IPR proceedings. Alarm.com challenged this decision in federal district court under the Administrative Procedure Act (APA). The district court dismissed, finding that the reexamination statute’s non-reviewability provision barred judicial review of the Director’s decision.
The Court’s Holding
The Federal Circuit reversed and remanded, holding that the Director’s estoppel-based vacatur of the reexamination proceedings was reviewable under the APA. The key question was whether the statutory bar on review in 35 U.S.C. § 303(c)—which states that a Director’s determination that “no substantial new question of patentability has been raised will be final and nonappealable”—applied to the Director’s estoppel decision.
The Federal Circuit said no. The preclusion provision in § 303(c) covers only determinations that no substantial new question of patentability exists—a patentability-based determination on the merits of the reexamination request. The Director’s decision here was different: he never reached patentability. He vacated the proceedings solely on the ground that Alarm.com was estopped from pursuing them. That is a legal determination about § 315(e)(1) and IPR estoppel, not a determination about the novelty or obviousness of the patent claims. Because the statutory bar was inapplicable, the APA’s presumption of reviewability of agency action applied, and the district court had jurisdiction to hear Alarm.com’s challenge.
The court did not resolve the merits of whether the Director properly applied § 315(e)(1) estoppel to ex parte reexamination—that question was left for the district court on remand.
Key Takeaways
- The non-reviewability bar in 35 U.S.C. § 303(c) is narrow: it applies only to determinations that no substantial new question of patentability was raised, not to all Director decisions related to reexamination.
- When the Director vacates a reexamination on legal grounds (such as estoppel) without reaching the patentability question, the APA’s presumption of reviewability controls and federal courts have jurisdiction.
- Parties whose reexamination requests are vacated due to IPR estoppel can now challenge those decisions in district court under the APA—an important procedural avenue previously thought to be closed.
- The underlying question of whether § 315(e)(1) IPR estoppel even applies to ex parte reexamination remains open and contested after this decision.
Why It Matters
The ex parte reexamination system is one of several tools available to challenge patent validity, and it has long operated with relatively limited court oversight compared to the newer IPR system. This decision opens the door for judicial scrutiny of USPTO Director decisions that go beyond the patentability question and invoke legal doctrines like estoppel. For patent challengers, it means the Director cannot simply close the reexamination door on estoppel grounds without that decision being subject to review. For patent owners, it creates uncertainty—previously, a Director estoppel ruling provided a final, unreviewable shield; now, that shield can be challenged in federal court.
The broader significance lies in the APA’s strong presumption of reviewability: absent a clear congressional signal that a category of agency action is unreviewable, courts retain oversight. The Federal Circuit’s reading of § 303(c) as narrowly targeted at patentability determinations—not legal determinations like estoppel—reinforces that presumption and may affect how other USPTO Director decisions are treated in future litigation.