Reexaminations after denial of an IPR following RE VIVINT, INC.

On September 29, 2021, the Court of Appeals for the Federal Circuit struck down a USPTO decision to permit Ex Parte reexamination when “a requester who has repeatedly tried to [IPR] to forward the same arguments.” The court emphasized the limited scope of its ruling, where the reexamination request was “copied almost word for word” from the requester’s final IPR, which the USPTO denied based on “abusive filing practices”.

Nevertheless, Vivint could have broader implications.

In light of the growing number of Ex Parte reexamination requests filed each quarter, patent owners may attempt to argue reexaminations should be barred following any petition which has been discretionarily denied. Further, what constitutes abusive filing practices is a slippery slope – one that could open the door to a number of arguments over fact patterns that should have resulted in a discretionary denial of petitions by the USPTO, which then should have resulted in a denial of reexamination. Vivint may just be the beginning of a series of rulings cracking down on reexaminations.