Federal Circuit: “Improper” IPR Filing Strategies May Require USPTO to Deny Overlapping Reexams

October 1, 2021

The Federal Circuit has overturned a final office action in an ex parte reexamination filed by Alarm.com, holding that the Patent Office applied an overly narrow view of its discretion in rejecting patent owner Vivint’s petition to terminate that proceeding. In its September 29 precedential decision in In re: Vivint, the court held that the same authority giving the Patent Office the discretion to undo institution decisions in America Invents Act (AIA) reviews also applies to reexams. Moreover, the Federal Circuit held that the USPTO “abused its discretion” by moving forward with the reexam at issue after having previously denied institution in an overlapping inter partes review (IPR) due to the petitioner’s “improper” filing strategies.

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