Case: 21-2102 Document: 38 Page: 1 Filed: 02/24/2022 United States Court of Appeals for the Federal Circuit ______________________ ALARM.COM INCORPORATED, Plaintiff-Appellant v. ANDREW HIRSHFELD, PERFORMING THE FUNCTIONS AND DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, UNITED STATES PATENT AND TRADEMARK OFFICE, Defendants-Appellees ______________________ 2021-2102 ______________________ Appeal from the United States District Court for the Eastern District of Virginia in No. 1:21-cv-00170-CMH- TCB, Senior Judge Claude M. Hilton. ______________________ Decided: February 24, 2022 ______________________ SHARONMOYEE GOSWAMI, Cravath Swaine & Moore LLP, New York, NY, argued for plaintiff-appellant. KEVIN BENJAMIN SOTER, Appellate Staff, Civil Division, United States Department of Justice, Washington, DC, ar- gued for defendants-appellees. Also represented by BRIAN Case: 21-2102 Document: 38 Page: 2 Filed: 02/24/2022 2 ALARM.COM INCORPORATED v. HIRSHFELD M. BOYNTON, DANIEL TENNY. JESSICA D. ABER, Office of the United States Attorney for the Eastern District of Virginia, United States Department of Justice, Alexandria, VA; SARAH E. CRAVEN, THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED, MEREDITH HOPE SCHOENFELD, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA. ______________________ Before TARANTO, CHEN, and CUNNINGHAM, Circuit Judges. TARANTO, Circuit Judge. In 2015, Alarm.com Incorporated filed petitions in the Patent and Trademark Office (PTO or Patent Office) seek- ing inter partes reviews (IPRs) under 35 U.S.C. §§ 311–19 of claims of three patents owned by Vivint, Inc. The IPRs were instituted, and the PTO’s Patent Trial and Appeal Board in 2017 issued three final written decisions, which rejected Alarm.com’s challenges to certain claims, a rejec- tion that we affirmed on appeal in late 2018. In mid-2020, Alarm.com filed with the PTO three requests for ex parte reexamination of those very claims under 35 U.S.C. §§ 301–07. The PTO’s Director, without deciding whether the requests presented a “substantial new question of pa- tentability,” § 303(a), vacated the ex parte reexamination proceedings based on the estoppel provision of the IPR re- gime, § 315(e)(1), which, the Director concluded, estopped Alarm.com from pursuing the requests once the IPRs re- sulted in final written decisions. Alarm.com sought review of the Director’s vacatur de- cisions in district court under the Administrative Proce- dure Act (APA), 5 U.S.C. §§ 706(2)(A), (C). The district court dismissed Alarm.com’s complaint on the ground that APA review of the Director’s decision was precluded by the ex parte reexamination scheme viewed as a whole. Alarm.com Inc. v. Hirshfeld, No. 1:21-cv-170, 2021 WL Case: 21-2102 Document: 38 Page: 3 Filed: 02/24/2022 ALARM.COM INCORPORATED v. HIRSHFELD 3 2557948 (E.D. Va. June 22, 2021). On Alarm.com’s appeal, we reverse. I A Congress created the ex parte reexamination regime in 1980 by adding sections 301 through 307 to Title 35, U.S. Code. Public Law No. 96-517, § 1, 94 Stat. 3015, 3015–17 (1980). Under the statute, as amended, “[a]ny person at any time may cite to the [PTO] in writing” certain prior art “which that person believes to have a bearing on the pa- tentability of any claim of a particular …
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