In re Vivint, Inc. "new"; 325(d), APA, and ex parte reexamination
RICK NEIFELD
In re Vivint, Inc., 2020-1992 (Fed. Cir. 9/29/2021) today, provides a lot of new law to unpack. So I will just list the highlights.
First, the requirement for a substantial question of patentability to be "new", for purposes of instituting reexamination, means "the Patent Office must have considered and decided that question on the merits." (unless perhaps the question is already pending in an ongoing PTO proceeding; that point was a bit fuzzy). The main point here is that having an question raised but not decided on the merits means the question is still deemed "new" for the "substantial new question of patentability" test.
Second, 325(d) decisions are reviewable under the APA. ("Initially, we reject the government’s argument that § 325(d) decisions are not reviewable. *** Accordingly, we review the Patent Office’s § 325(d) decision under the APA. See 5 U.S.C. § 706")
Third, "Section 325(d) applies to both IPR petitions and requests for ex parte reexamination."
Fourth, "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."
Finally, the Federal Circuit noted that this was not a case where the Director had invoked his authority to sua sponte initiate reexamination, and that the holding here did not affect that authority.
So while the Federal Circuit rejected Vivint's arguments that the grounds presented in previous IPRs were not "new"; it accepted Vivint's arguments that the PTO "abused its discretion and acted arbitrarily and capriciously by ordering reexamination, and thereafter, refusing to terminate that proceeding."
Best regards, RICK
Rick Neifeld, Ph.D., Patent Attorney
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RICK NEIFELD
W***** - I think you are correct. The case indicates a substantial question of patentability is not “new,” pretty much only if the question had previously been raised, - - and decided on the merits - - in some other proceeding. I hate typos, but seeming cannot avoid them. Sigh. Best, RICK
From:
Sent: Wednesday, September 29, 2021 5:44 PM
To: RICK NEIFELD <rnei...@neifeld.com>
Subject: RE: In re Vivint, Inc. "new"; 325(d), APA, and ex parte reexamination
Rick, thanks for your note.
Maybe I’m confused, but is there negation missing in your first highlight? See my red insertion.
Thanks -Warren Wolfeld
From: pate...@googlegroups.com <pate...@googlegroups.com>
On Behalf Of RICK NEIFELD
Sent: Wednesday, September 29, 2021 12:06 PM
To: Rick's List-Serve (pate...@googlegroups.com) <pate...@googlegroups.com>
Subject: In re Vivint, Inc. "new"; 325(d), APA, and ex parte reexamination
In re Vivint, Inc., 2020-1992 (Fed. Cir. 9/29/2021) today, provides a lot of new law to unpack. So I will just list the highlights.
First, in order to fail
the requirement for a substantial question of patentability to be "new", for purposes of instituting reexamination,
means "the Patent Office must have considered and decided that question on the merits." (unless perhaps the question is already pending in an ongoing PTO proceeding; that point was a bit fuzzy).
The main point here is that having an question raised but not decided on the merits means the question is still deemed "new" for the "substantial new question of patentability" test.
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