Background
This case stems from the longstanding dispute between home security companies Vivint and Alarm.com. Vivint had sued Alarm.com for infringing several patents. Alarm.com responded by filing multiple inter partes review (IPR) petitions at the Patent Trial and Appeal Board (PTAB), challenging the validity of Vivint’s patents. The PTAB denied institution of the IPRs on the challenged patent. The Federal Circuit later affirmed that denial.
More than a year after its IPR attempts failed, Alarm.com filed requests for ex parte reexamination of the same patent — using prior art arguments that were substantially identical to those from its failed IPR petitions. In some instances, two of the four patentability arguments in the reexamination request were copied verbatim from the IPR petition. Despite the near-identical nature of the arguments, the PTAB ordered reexamination, finding that the requests raised a “substantial new question of patentability.” Vivint challenged this decision in federal court under the Administrative Procedure Act (APA).
The Court’s Holding
The Federal Circuit vacated the PTAB’s order and directed dismissal of the reexamination proceeding. The court held that the USPTO acted arbitrarily and capriciously under the APA by ordering reexamination when the arguments presented were substantially identical to those the same party had previously lost on in the IPR context.
The court relied on 35 U.S.C. § 325(d), which authorizes the USPTO to reject reexamination requests when “the same or substantially the same prior art or arguments previously were presented to the Office.” The PTAB has broad discretion to invoke this provision, and its failure to do so when arguments were being recycled from a failed IPR — with some copied word-for-word — constituted an arbitrary and capricious departure from reasoned agency decision-making.
The Federal Circuit also clarified the standard for what constitutes a “new” question of patentability under the reexamination statute: the question is new until it has been “considered and decided on the merits,” but the USPTO must exercise its § 325(d) discretion when a requester is essentially seeking another bite at the same apple through a different procedural vehicle.
Key Takeaways
- The USPTO has broad discretion under § 325(d) to reject ex parte reexamination requests that are substantially similar to arguments already raised and rejected in IPR or other post-grant proceedings.
- Using ex parte reexamination as a second-chance vehicle after a failed IPR — especially by recycling the same prior art arguments — risks having the reexamination dismissed as an abuse of the process.
- The APA’s arbitrary-and-capricious standard applies to USPTO decisions to order or deny reexamination, giving courts a mechanism to review those decisions even where explicit statutory review is limited.
- Patent challengers must be strategic in selecting prior art and arguments across different proceedings, as arguments abandoned or rejected in one context may be foreclosed in subsequent challenges.
Why It Matters
The multi-pathway nature of patent challenge proceedings — IPR, post-grant review, inter partes reexamination, ex parte reexamination — creates the temptation for patent challengers to use one track after another to attack the same patent. In re Vivint draws a meaningful line: the USPTO is not obligated to give a challenger a fresh audience when it is simply repackaging arguments it already lost. The decision reinforces the doctrine of coordination across proceedings and signals that strategic use of serial filings will face scrutiny.
For patent owners, the ruling offers meaningful protection against harassment through repetitive challenges. For practitioners, it underscores the importance of the § 325(d) discretionary denial argument when opposing reexamination requests that closely track prior failed IPR grounds.