Wilkins, Ehmke and Horsley in IPWatchdog: Post-Vivint Patent Office Treatment of Ex Parte Reexaminations After Non-Instituted IPRs

Partners Clint Wilkins and Andy Ehmke and Associate Eric Horsley authored an article in IPWatchdog discussing ex parte reexaminations of IPRs in the wake of In re Vivent. Read an excerpt below:

Given the various ways the Patent Trial and Appeal Board (PTAB) can exercise discretion to deny institution of an inter partes review (IPR) petition (and the corresponding non-appealability of those decisions), ex parte reexamination is becoming an attractive option to challenge patent validity following a decision not to institute.

Because a later filed ex parte reexamination is often viewed as a “second bite at the apple,” there were questions as to how the U.S. Patent and Trademark Office (USPTO) should treat these second attempts at invalidating a patent. For IPRs, the PTAB has used several bases for discretionary denial of a later-filed IPR, but those bases were not being applied to follow-on ex parte reexamination requests. However, in In re Vivint, the Federal Circuit held that the USPTO has the authority to discretionarily deny an ex parte reexamination request under 35 U.S.C. § 325(d), i.e., if “the same or substantially the same prior art or arguments previously were presented to the Office.” In re Vivint, Inc., 14 F.4th 1342, 1354 (Fed. Cir. 2021).

In re Vivint, Inc. filed three petitions seeking IPR of Vivint’s patent. The last of the three IPRs was denied institution due to “undesirable, incremental petitioning” as a “similar, serial challenge[] to the same patent, by the same petitioner.” In re Vivint, Inc., 14 F.4th 1342, 1346 (Fed. Cir. 2021) (quoting from the Board’s decision). Moreover, the Board “relied on § 325(d) considerations” to deny institution based on “abusive filing practices.” Id. at 1350.

After the failed IPR petitions, requested ex parte reexamination of the same patent, “largely repackag[ing]” the arguments raised in the third IPR petition. Id. at 1346. During the reexamination, Vivint’s repeated requests for dismissal under § 325(d) were denied. Id. at 1347-48. After final rejection of all claims, Vivint appealed to the PTAB, who affirmed, and then to the Federal Circuit. Id. at 1348.

To read the full article on IPWatchdog, click here.

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