Patent Case Summaries March 2, 2022

Patent Case Summaries | Week Ending February 25, 2022

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board. Inc. v. Hirshfeld, No. 2021-2102 (Fed. Cir. (E.D. Va.) Feb. 24, 2022). Opinion by Taranto, joined by Chen and Cunningham.

In 2015, filed IPR petitions challenging claims in three patents owned by Vivint. The Patent Trial and Appeal Board issued final written decisions rejecting the challenges, and the Federal Circuit affirmed on appeal in late 2018. Then, in 2020, filed three requests for ex parte reexamination of the same claims that were involved in the IPRs.

Without deciding whether the requests presented substantial new questions of patentability, the PTO’s Director vacated the ex parte reexamination proceedings based on the estoppel provision of the IPR regime, 35 U.S.C. § 315(e)(1). The Director concluded that was estopped from pursuing the requests once the IPRs resulted in final written decisions. appealed.

The Federal Circuit reversed, ruling that the statutory text, statutory scheme, and legislative history pertaining to ex parte reexaminations do not evince an intent by Congress to preclude judicial review of decisions made pursuant to the estoppel provisions of § 315(e)(1). The Federal Circuit explained that the only portion of the ex parte reexamination statute that precludes judicial review is § 303(c), which makes determinations by the Director that a substantial new question of patentability has not been raised final and non-appealable. Estoppel determinations under § 315(e)(1) are outside the scope of § 303(c). The Federal Circuit also emphasized that the statutory scheme and legislative history does not support an inference of congressional intent to bar review of vacatur decisions. The Federal Circuit thus reversed and remanded on the basis that § 303(c) does not apply to the estoppel decisions at issue.

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