United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: VIVINT, INC.,

Appellant

______________________ 

2020-1992

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 90/020,115.

______________________ 

Decided: September 29, 2021

______________________ 

WILLIAM MILLIKEN, Sterne Kessler Goldstein & Fox, 

PLLC, Washington, DC, argued for appellant. Also represented by JASON DANIEL EISENBERG, ROBERT GREENE 

STERNE. 

 ROBERT J. MCMANUS, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrew Hirshfeld. Also represented by 

THOMAS W. KRAUSE, MAUREEN DONOVAN QUELER,

FARHEENA YASMEEN RASHEED. 

 ______________________ 

Before MOORE, Chief Judge, SCHALL and O’MALLEY,

Circuit Judges.

MOORE, Chief Judge. 

In 2011, Congress passed the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284 (codified 

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2 IN RE: VIVINT, INC. 

in scattered sections of title 35). Overhauling the patent 

system, Congress created new ways to reexamine the validity of issued patents. See id. “[I]n the post-AIA world, a 

patent can be reexamined either in federal court during a 

defense to an infringement action, in an ex parte reexamination by the Patent Office, or in the suite of three postissuance review proceedings before the Patent Trial and 

Appeal Board.” Return Mail, Inc. v. U.S. Postal Serv., 139 

S. Ct. 1853, 1860 (2019). Often, parties use multiple pathways to challenge validity. For example, an accused infringer may challenge validity both in district court and in

an inter partes review (IPR), one of the three post-issuance 

review proceedings.

This case requires us to determine when one pathway, 

ex parte reexamination, is available to a requester who has

repeatedly tried to use another pathway, IPR, to forward 

the same arguments. By statute, the Patent Office must 

find a “substantial new question of patentability” before ordering reexamination, 35 U.S.C. § 303(a), and it may deny 

reexamination when “the same or substantially the same 

prior art or arguments previously were presented to the Office,” 35 U.S.C. § 325(d).1 While the ex parte reexamination 

in this case was based on substantial new questions of patentability, the Patent Office abused its discretion and 

1 Both statutes refer to the Patent Office’s Director. 

35 U.S.C. §§ 303(a) (“[T]he Director will determine whether

. . . .”), 325(d) (“[T]he Director may . . . reject the petition

. . . .”). But the Director has delegated the § 303(a) inquiry 

to examiners. See 37 C.F.R. § 1.515. And the Office of Patent Legal Administration (OPLA), a subset of the Patent 

Office, resolved Vivint’s petitions that raised § 325(d). See 

37 C.F.R. § 1.181(a) (allowing for petitions invoking the Director’s supervisory authority), 1.181(g) (allowing for delegation of review of such petitions). The parties treat each 

entity as an arm of the Patent Office, and we do the same. 

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IN RE: VIVINT, INC. 3

acted arbitrarily and capriciously under § 325(d). Thus, we 

vacate and remand with instructions for the Patent Office 

to dismiss.2

BACKGROUND

In 2015, Vivint sued Alarm.com for infringing four patents, including U.S. Patent No. 6,717,513. While defending itself in district court, Alarm.com requested the Patent 

Office institute a litany of post-issuance review proceedings. In total, Alarm.com filed fourteen IPR petitions. 

Three of those petitions—IPR2015-01997, IPR2016-00129, 

and IPR2016-01091—challenged the validity of claims in 

the ’513 patent, which is the only patent at issue here. 

The Patent Office ultimately declined to institute IPR 

for the ’513 patent. For the ’997 and ’129 petitions, the Patent Office determined that Alarm.com failed to make the 

threshold showing for institution: a reasonable likelihood 

that it would prevail on at least one challenged claim. See 

35 U.S.C. § 314(a). For the ’091 petition, however, the Patent Office declined institution on a different basis. It

viewed the ’091 petition as an example of “undesirable, incremental petitioning.” Alarm.com Inc. v. Vivint, Inc., 

IPR2016-01091, Paper 11, at 12 (P.T.A.B. Nov. 23, 2016)

(’091 Decision). Alarm.com had “used prior Board decisions 

as a roadmap to correct past deficiencies.” Id. And the Patent Office reasoned that “allowing similar, serial challenges to the same patent, by the same petitioner, risks 

harassment of patent owners and frustration of Congress’s 

intent in enacting the Leahy-Smith America Invents Act.” 

Id. (internal quotation marks and alterations omitted). To 

discourage such petitioning, the Patent Office exercised its 

discretion to deny institution for the ’091 petition. Id.

2 Vivint waived its Appointments Clause challenge, 

so we need not remand on that basis.

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4 IN RE: VIVINT, INC. 

More than a year later, Alarm.com requested ex parte 

reexamination of all claims of the ’513 patent. Largely, this 

request repackaged the arguments raised in the ’091 petition. Alarm.com presented four questions of patentability 

for the Patent Office to review: 

J.A. 70. Two of those questions came directly from the ’091 

petition. In fact, vast swaths of the ex parte reexamination 

request copied, almost word for word, the ’091 petition. 

Compare J.A. 84–125, 132–36, with Alarm.com Inc. v. 

Vivint, Inc., IPR2016-01091, Paper 1, at 16–57, 64–67

(P.T.A.B. May 24, 2016). For the two other questions, 

which related only to claim 14, Alarm.com replaced a reference cited in the ’091 petition, Britton, with another reference, Cheng. But it did so only after the Patent Office 

had addressed Britton in three related IPRs. 

Based on Alarm.com’s request, the Patent Office ordered reexamination for all claims of the ’513 patent. It 

concluded that Alarm.com had raised substantial new 

questions of patentability despite the prior IPRs: 

[The Patent Office] notes that the Shetty, Joao, and 

Garton references are now presented in a new light 

compared to the earlier examinations and proceedings in view of the material new argument and interpretation presented in the Request. 

Accordingly, the use of these references in this 

reexamination is proper. 

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IN RE: VIVINT, INC. 5

J.A. 982. The Patent Office did not, however, cite § 325 or 

discuss its discretion under that provision. See J.A. 976–

84. 

Vivint then petitioned the Patent Office under 37 

C.F.R. § 1.181, seeking dismissal of the ex parte reexamination. It argued that the Patent Office has authority to 

deny reexamination under § 325(d) because that statute 

applies to ex parte reexaminations and IPRs with equal 

force. It also argued that each factor the Patent Office uses 

when exercising its discretion under § 325(d) counseled in 

favor of dismissal.3 Finally, in Vivint’s view, the Patent 

Office could not decline to institute IPR based on abusive 

filing practices, yet grant reexamination on essentially the 

same facts. 

The Patent Office dismissed Vivint’s petition, holding

that any § 1.181 petition raising 35 U.S.C. § 325(d) must be 

filed before reexamination is ordered. Based on §§ 304, 

305, and 325(d), the Patent Office reasoned that it had no 

authority to consider petitions filed after reexamination 

was ordered. While that reasoning drove the Patent Office’s dismissal, the Patent Office also “provide[d] additional comments . . . in order to clarify [its] policy” on 

several points. J.A. 10847. 

In a second petition under § 1.181, Vivint sought reconsideration of the § 325(d) issue. It argued that raising 

§ 325(d) in a petition would have been impossible before ex 

parte reexamination was ordered, so the Patent Office 

should not have faulted Vivint for its timing. And Vivint 

argued that, even if the Patent Office generally lacks authority to terminate a reexamination, it had authority to do 

so in this case under the Administrative Procedure Act 

3 Although Vivint purported to discuss factors relating to § 325(d), it actually discussed the eight § 314(a) factors.

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6 IN RE: VIVINT, INC. 

(APA). Vivint also claimed the Patent Office acted arbitrarily and capriciously by applying the same law to the 

same facts and reaching a different conclusion. 

The Patent Office denied Vivint’s second § 1.181 petition. It reasoned that, though Patent Office rules prevented Vivint from filing a § 1.181 petition before ex parte 

reexamination was ordered, Vivint could have sought 

waiver of those rules. Also, the Patent Office rejected 

Vivint’s APA arguments, viewing them as an attempt to 

circumvent statutory limits. Likewise, the Patent Office 

explained how granting ex parte reexamination was not inconsistent with denying IPR. It contrasted the statutory 

frameworks used to make each decision. And it reasoned 

that, even if the IPR was denied based solely on § 325(d) 

considerations, the differences between ex parte reexamination and IPR could justify such an outcome. But, like the 

first petition, the Patent Office’s ultimate decision focused 

on the timing of Vivint’s petition as the basis for denying 

relief. J.A. 12217. 

Ultimately, an examiner issued a final rejection for all 

claims of the ’513 patent, and Vivint appealed to the Board. 

The Board affirmed. In doing so, it held that Alarm.com’s 

request raised substantial new questions of patentability, 

but it did not address § 325(d). Vivint appeals. We have 

jurisdiction under 28 U.S.C. § 1295(a)(4)(A). 

DISCUSSION

“We review the Board’s decisions under the standard[s]

set forth in the [APA].” Alacritech, Inc. v. Intel Corp., 966 

F.3d 1367, 1370 (Fed. Cir. 2020). Those standards require 

us to “decide all relevant questions of law” and to set aside 

agency actions that are “arbitrary, capricious, an abuse of 

discretion, or otherwise not in accordance with law.” 5 

U.S.C. § 706. Our review under the APA is not limited to 

the four corners of a final agency action; we may also review “preliminary, procedural, or intermediate agency 

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IN RE: VIVINT, INC. 7

action[s] or ruling[s]” that are “not directly reviewable” before a final action. 5 U.S.C. § 704. 

I 

To order reexamination, the Patent Office must identify a “substantial new question of patentability.” 35 

U.S.C. § 303(a). Vivint challenges the Patent Office’s outcome on that score, which is a question of law that we review without deference. See In re Swanson, 540 F.3d 1368, 

1381 (Fed. Cir. 2008) (“[T]he ultimate question of whether 

the reexamination is based on a substantial new question 

of patentability . . . remains a question of law.”).4 Vivint 

argues that, because the ex parte reexamination request repackaged arguments in the ’091 petition, it did not present 

a new question of patentability. We do not agree. 

A 

The text of § 303(a) provides little guidance on the 

meaning of the word new in the phrase “substantial new 

question of patentability”: 

Within three months following the filing of a request for reexamination under the provisions of 

section 302, the Director will determine whether a

substantial new question of patentability affecting 

any claim of the patent concerned is raised by the 

request, with or without consideration of other patents or printed publications. On his own initiative, 

and any time, the Director may determine whether 

a substantial new question of patentability is raised 

4 While the substantial-new-question inquiry may 

involve underlying fact questions, which we would review 

for substantial evidence, we see no such questions here. 

See In re Swanson, 540 F.3d at 1381 (holding the scope of 

an examiner’s prior consideration of a reference is a question of fact). 

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8 IN RE: VIVINT, INC. 

by patents and publications discovered by him or 

cited under the provisions of section 301 or 302. 

The existence of a substantial new question of patentability is not precluded by the fact that a patent 

or printed publication was previously cited by or to 

the Office or considered by the Office.

(emphasis added). It neither defines the word new nor provides examples of questions of patentability that would 

qualify as new.

The broader statutory context, however, clarifies that 

a question of patentability is new until it has been considered and decided on the merits. See, e.g., Home Depot 

U.S.A., Inc. v. Jackson, 139 S. Ct. 1743, 1748 (2019) (“[T]he 

words of a statute must be read in their context and with a 

view to their place in the overall statutory scheme.”). The 

Patent Office has discretion to deny an ex parte reexamination request that raises an argument that has been previously presented to it: 

In determining whether to institute or order a proceeding under . . . [§ 303(a)] . . . , the Director may 

take into account whether, and reject the petition 

or request because, the same or substantially the 

same prior art or arguments previously were presented to the Office.

35 U.S.C. § 325(d) (emphasis added). That discretion 

would be meaningless if a question of patentability was not 

new simply because it had been previously presented to the 

Patent Office. Therefore, more is required for a question of 

patentability to no longer be new; the Patent Office must 

have considered and decided that question on the merits. 

While not binding on this court, the Manual of Patent 

Examining Procedure (MPEP) supports that conclusion. 

MPEP § 2242(I) defines the word new in § 303(a) by describing the three circumstances in which a question is not 

new:

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IN RE: VIVINT, INC. 9

a substantial new question of patentability as to 

the claim is present, unless the same question of 

patentability has already been: (A) decided in a final holding of invalidity by a federal court in a decision on the merits involving the claim, after all 

appeals; (B) decided in an earlier concluded examination or review of the patent by the Office; or 

(C) raised to or by the Office in a pending reexamination or supplemental examination of the patent.

(emphasis in original). In the first two cases, “the same 

question of patentability” must have “already been . . . decided” by the Patent Office, not merely raised to or considered by that office. Id. While the last category does include 

questions “raised to” the Patent Office, it is limited to questions in “pending reexamination[s] or supplemental examination[s].” Id. (emphasis added). In those cases, the 

Patent Office is currently considering the question of patentability on the merits, which prevents it from being new. 

Vivint focuses on another portion of MPEP § 2242(I), 

which defines the phrase “an earlier concluded examination or review.” It argues that a catchall category in that 

definition—“any other contested [Patent] Office proceeding 

which has been concluded and which involved the patent”—includes decisions denying institution. Even assuming that conclusion, a question must have been 

“decided in an earlier concluded examination,” not merely 

raised to the Patent Office, in order to meet § 2242(I)’s 

plain terms. Ultimately, nothing Vivint points to in the 

MPEP undermines our holding that a question of patentability is new until it has been considered and decided on 

the merits. 

B 

Alarm.com’s request raised four questions of patentability, and we hold each of those questions was new under 

§ 303(a). In each case, the Patent Office has never considered the relevant question of patentability on the merits. 

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10 IN RE: VIVINT, INC. 

Vivint’s core argument is that “the invalidity challenges raised in Alarm.com’s reexamination request had already been considered and rejected by the Board in the” 

’091 Decision. Appellant’s Br. at 18, 20. But that argument

is twice flawed. First, the ’091 petition did not raise two of 

the four questions of patentability raised in the ex parte 

reexamination request. In the ex parte reexamination request, Alarm.com challenged the patentability of claim 14 

on two bases, both of which relied on the Cheng reference. 

But neither of those bases had been presented to the Patent 

Office before. Nor had the Patent Office ever considered 

the patentability of claim 14 in light of Cheng. That, alone, 

renders the claim 14 questions new.

Second, the Patent Office never considered or decided

the questions of patentability raised in the ’091 petition. To 

be sure, the ’091 petition presented several questions of patentability, two of which were identical to questions raised 

in the ex parte reexamination request. But the Patent Office may deny institution without resolving any questions 

of patentability. See, e.g., 35 U.S.C. § 325(d). And that is 

precisely what the Patent Office did in the ’091 Decision; it 

relied on Alarm.com’s abusive filing practices to deny institution. The Patent Office did not decide the questions of 

patentability raised in the ’091 petition. Instead, it found 

Alarm.com’s serial filing to amount to an abuse of process 

and, therefore, refused to address the merits of the patentability arguments. Thus, we hold the ex parte reexamination in this case was based on substantial new questions of 

patentability. 

II

Even when an ex parte reexamination request presents 

a substantial new question of patentability, the Patent Office “may . . . reject the . . . request because the same or 

substantially the same prior art or arguments previously 

were presented to” it. 35 U.S.C. § 325(d). Vivint contends 

the Patent Office abused its discretion and acted 

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IN RE: VIVINT, INC. 11

arbitrarily and capriciously by ordering reexamination, 

and thereafter, refusing to terminate that proceeding. We 

agree. 

A 

Initially, we reject the government’s argument that 

§ 325(d) decisions are not reviewable. See Appellee’s Br. at 

31–33.5 At base, the government argues § 325(d) decisions 

are committed to agency discretion based on that statute’s 

permissive language. But permissive language, alone, does 

not render a question committed to agency discretion under 5 U.S.C. § 701(a)(2). See, e.g., Dickson v. Sec’y of Def., 

68 F.3d 1396, 1401 (D.C. Cir. 1995). “As we have held, 

§ 701(a)(2) provides a very narrow exception to the presumption of judicial review, and is applicable only in those 

rare instances where statutes are drawn in such broad 

terms that in a given case there is no law to apply.” Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1348 (Fed. 

Cir. 2019) (quotation marks omitted). We are not persuaded that § 325(d) meets that taxing standard.

Accordingly, we review the Patent Office’s § 325(d) decision under the APA. See 5 U.S.C. § 706. Under the APA, 

we must set aside an agency action that is either an abuse 

of discretion or arbitrary and capricious. Id. § 706(2)(A).

Agency action is an abuse of discretion when it “(1) is 

clearly unreasonable, arbitrary, or fanciful; (2) is based on 

an erroneous conclusion of law; (3) rests on clearly 

5 Under 35 U.S.C. § 303(c), “[a] determination by the 

Director pursuant to subsection (a) of this section that no 

substantial new question of patentability has been raised 

will be final and nonappealable.” The Director does not invoke that provision here, for good reason. The provision 

does not apply to a determination that a substantial new 

question of patentability has been raised, and it does not 

apply to a determination under 35 U.S.C. § 325(d).

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12 IN RE: VIVINT, INC. 

erroneous fact findings; or (4) involves a record that contains no evidence on which the [agency] could rationally 

base its decision.” Honeywell, 939 F.3d at 1348. A decision 

is arbitrary and capricious when the agency fails to articulate a “rational connection between the facts found and the 

choice made.” Motor Vehicle Mfrs. Ass’n of U.S., Inc. v. 

State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983). 

B 

Here, we must set aside the Patent Office’s § 325(d) determination. A legal error—the Patent Office’s narrow interpretation of its authority to reconsider orders granting 

reexamination—infected that determination. And, in light 

of the ’091 Decision, it was arbitrary and capricious for the 

Patent Office to order reexamination over § 325(d), or, at 

minimum, refuse to terminate reexamination once Vivint 

requested it do so. Because the Patent Office should not 

have ordered reexamination, we vacate and remand with 

instructions to dismiss. 

1 

In dismissing and denying Vivint’s § 1.181 petitions, 

the Patent Office relied primarily on its alleged lack of authority to terminate an ex parte reexamination. See J.A. 

10847. We do not agree with the Patent Office’s assessment of its authority. The Patent Office has authority to 

reconsider its decision ordering ex parte reexamination 

based on § 325(d). “The power to reconsider is inherent in 

the power to decide.” Tokyo Kikai Seisakusho, Ltd. v. 

United States, 529 F.3d 1352, 1360 (Fed. Cir. 2008). We 

have applied that principle to hold the Patent Office has 

authority to reconsider IPR institution decisions. See, e.g., 

Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 

F.3d 1382, 1385 (Fed. Cir. 2016); cf. GTNX, Inc. v. INTTRA, 

Inc., 789 F.3d 1309, 1313 (Fed. Cir. 2015). We reasoned 

that “nothing in the statute or regulations applicable [to 

CBMs] clearly deprives the Board of that default authority.” GTNX, Inc., 789 F.3d at 1313. And we likewise see 

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IN RE: VIVINT, INC. 13

nothing in the statutes or regulations preventing the Patent Office from reconsidering a decision ordering ex parte 

reexamination. See, e.g., 35 U.S.C. §§ 301–07 (governing 

ex parte reexamination); 37 C.F.R. § 1.183 (allowing for 

waiver of Patent Office rules). Thus, the Patent Office 

abused its discretion by denying Vivint’s § 1.181 petitions 

based on a contrary legal conclusion: that the Patent Office 

did not have authority to consider those petitions. 

While the Patent Office purported to consider Vivint’s 

§ 325(d) arguments on the merits, its legal error infected 

that analysis. In its first § 1.181 decision, the Patent Office 

held that it did “not have the discretion to terminate an 

ongoing reexamination on the basis set forth in 35 U.S.C. 

[§] 325(d) if no petition requesting such relief is filed until 

after reexamination has been ordered.” J.A. 10847 (emphasis in original). And that holding drove the Patent Office’s 

dismissal decision. See J.A. 10856. The remainder of the 

first decision included “additional comments . . . in order to 

clarify [Patent] Office policy,” but those comments were 

tangential to the Patent Office’s decision. J.A. 10847. Indeed, the Patent Office reincorporated its erroneous legal 

conclusion into its policy conclusions. J.A. 10853 (“For all 

of the reasons set forth above, the determination by the 

[Patent] Office not to exercise its discretion under 

[§ 325(d)] in the present ex parte reexamination proceeding 

is not inconsistent with [IPR] practice.” (emphasis added)). 

The Patent Office’s second § 1.181 decision proceeded 

in much the same way. See J.A. 12210–19. The Patent 

Office stressed that Vivint “had the opportunity . . . to file 

a petition limited to issues involving 35 U.S.C. [§] 325(d) 

prior to the issuance of the order for reexamination, but 

chose not to do so.” J.A. 12213, 12217. And it faulted 

Vivint for failing to seek waiver of the Patent Office rules 

that prevented such a filing. To be sure, the second § 1.181 

decision mentioned Vivint’s § 325(d) arguments. And the 

Patent Office concluded that it had “reviewed the record 

and declined to reject the request [for ex parte 

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14 IN RE: VIVINT, INC. 

reexamination] under [§ 325(d)]” at the outset of the ex 

parte reexamination. J.A. 12217. But at the same time, 

the Patent Office again relied on its erroneous legal conclusion: “that once the [ex parte reexamination] order has issued, the Office is required by statute to conduct 

reexamination.” J.A. 12217. And like its decision on the 

first § 1.181 petition, the Patent Office incorporated its legal error into its ultimate conclusion. J.A. 12217 (“For all

the reasons set forth above, patent owner’s [petition] is denied.” (emphasis omitted)).6 

2 

Our finding that the Patent Office misunderstood the 

scope of its authority to terminate reexamination once instituted would normally prompt us to vacate the Patent Office’s decision so that it may exercise the authority as now 

properly understood. Doing so in this case would be a 

waste of everyone’s resources, however. It would be arbitrary and capricious for the Patent Office to do anything on 

remand other than terminate the reexamination. Agency 

action that “departs from established precedent without a 

reasoned explanation [is] arbitrary and capricious.” Fred 

Beverages, Inc. v. Fred’s Cap. Mgmt. Co., 605 F.3d 963, 967 

(Fed. Cir. 2010) (holding Trademark Trial and Appeal 

Board acted arbitrarily by denying leave when “[t]here 

[wa]s no basis on which to distinguish the circumstances of 

the present case from those in which” leave was granted). 

After the ’091 Decision, it was unreasonable for the Patent 

6 The government argues Vivint identified no basis 

for the Patent Office to use its discretionary power of reconsideration. But avoiding arbitrary and capricious conduct, see infra at 14–16, is certainly a valid basis for 

reconsideration. 

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IN RE: VIVINT, INC. 15

Office to order reexamination, and, once ordered, to refuse 

to terminate it. 

The ’091 Decision focused on Alarm.com’s abusive filing practices. The Patent Office viewed the ’091 petition as 

“a case of undesirable, incremental petitioning.” ’091 Decision at 12. And it noted how it regularly denies petitions, 

both in IPRs and in other post-issuance review proceedings, when petitioners “have used prior Board decisions as 

a roadmap to correct past deficiencies.” Id. The Patent Office did discuss the Board’s limited resources, but only in 

the context of Alarm.com’s abusive filing practices. Id. at 

13–14 (quoting LG Elecs. Inc. v. Core Wireless Licensing 

S.A.R.L., No. IPR2016-00986, Paper 12, at 6–7 (P.T.A.B. 

Aug. 22, 2016)). Likewise, the Patent Office focused on 

Alarm.com’s filing practices when discussing the remaining § 314(a) factors. Id. at 9 (noting, when discussing factor 

3, that the ’091 petition was Alarm.com’s third petition), 10 

(discussing the ’091 petition’s timing, which allowed 

Alarm.com to use related IPRs as a roadmap to fix deficiencies). 

Though the Patent Office ostensibly applied § 314(a) to 

deny institution, it actually relied on § 325(d) considerations for its core analysis. See id. at 11–12 (citing and applying § 325(d)). It reasoned that “allowing similar, serial 

challenges to the same patent, by the same petitioner, risks 

harassment of patent owners and frustration of Congress’s 

intent in enacting the [AIA].” Id. at 12 (citation omitted) 

(emphasis added). That is the heart of a § 325(d) analysis. 

And the Patent Office explicitly placed that reasoning 

within the § 325(d) framework:

[I]n making the determination whether Petitioner’s current challenges present the same or 

substantially the same art or arguments as those 

previously presented to the Office, we may consider 

whether Petitioner uses information gleaned from 

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16 IN RE: VIVINT, INC. 

our earlier decisions to bolster challenges it advanced unsuccessfully.

Id. at 11–12. Fundamentally, the ’091 decision denying institution relied on a § 325(d) analysis. 

Rather than learn its lesson, however, Alarm.com continued to engage in abusive filing practices after the ’091 

Decision. It copied, word-for-word, two grounds from the 

’091 petition—the very petition deemed “a case of undesirable, incremental petitioning”—into its ex parte reexamination request. And for the portions it did not copy, 

Alarm.com “used prior Board decisions as a roadmap to correct past deficiencies.” ’091 Decision at 12. Indeed, the ex 

parte reexamination request was a more egregious abuse 

than the ’091 petition under the same considerations already analyzed by the Board. The ’091 petition was the 

third filing in a string of “undesirable, incremental petitioning” practices. Id. And Alarm.com’s ex parte reexamination request was another, fourth iteration of 

Alarm.com’s abuse of process. It was, therefore, arbitrary 

for the Patent Office to grant reexamination after denying 

institution of the ’091 IPR based on § 325(d). 

The government argues that, because IPR and ex parte 

reexamination involve different procedures and policies, 

the Patent Office is free to grant an “undesirable, incremental” ex parte reexamination request even after it denies

a nearly identical IPR petition that was deemed “a case of 

undesirable, incremental petitioning.” We do not agree. 

Our holding today is narrow. Section 325(d) applies to both

IPR petitions and requests for ex parte reexamination. 

Thus, 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. We see no difference between the IPR 

and ex parte reexamination processes that would justify 

such conduct and nothing short of termination of the reexamination would be appropriate. 

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IN RE: VIVINT, INC. 17

Our ruling today is limited. As the Director notes as 

part of his argument about the difference in character between the ex parte reexamination regime and the IPR regime, there can be a public interest in reexamination that 

goes beyond the interests, or propriety of behavior, of a particular challenger. That is reflected most expressly in the 

statute’s grant to the Director of the authority to launch an 

ex parte reexamination “[o]n his own initiative.” 35 U.S.C. 

§ 303(a) (“On his own initiative, and any time, the Director 

may determine whether a substantial new question of patentability is raised by patents and publications discovered 

by him or cited under the provisions of section 301 or 302.”); 

see 37 C.F.R. § 1.520 (providing for Director’s “own initiative” authority). Section 303(a) makes clear that the Director’s “own initiative” authority provides a separate, 

supplemental path to an ex parte reexamination, beyond 

the § 302 “request” path, even where there is a § 302 request: the statute, as amended in 2011, expressly permits 

a Director’s “own initiative” decision to rely on information 

supplied in a request “under the provisions of section 

. . . 302.” 35 U.S.C. § 303(a); see SAS Inst. Inc. v. Iancu, 

138 S. Ct. 1348, 1355 (2018) (“In the ex parte reexamination statute, Congress embraced an inquisitorial approach, 

authorizing the Director to investigate a question of patentability ‘[o]n his own initiative, and at any time.’ 

§ 303(a).”). Notably, too, the second sentence of § 325(d), 

the basis for the discretion at issue in this case, does not 

apply to such “own initiative” authority; it applies only to 

a “petition or request,” which the Director may “reject” because of serial filings of a challenger. 35 U.S.C. § 325(d). 

The Director in this case, however, did not invoke the “own 

initiative” authority. Nor, apart from the “own initiative” 

authority, did he set forth a reasoned basis for exercising 

his § 325(d) discretion to launch the ex parte reexamination 

even accepting that Alarm.com was engaging in continuation of its abusive serial filing. Accordingly, we are not 

holding that the Director may never launch a 

Case: 20-1992 Document: 39 Page: 17 Filed: 09/29/2021
18 IN RE: VIVINT, INC. 

reexamination even when a particular challenger has engaged in improper serial filing.

CONCLUSION

While the ex parte reexamination in this case was 

based on substantial new questions of patentability, we 

must set aside the Patent Office’s § 325(d) decision under 

the APA. That decision was an abuse of discretion and was 

arbitrary and capricious. Therefore, the Patent Office 

should not have ordered reexamination, or, at minimum, 

should have terminated the reexamination once Vivint requested that it do so. Accordingly, we vacate and remand 

with instructions for the Patent Office to dismiss.

VACATED AND REMANDED

COSTS

No costs.

Case: 20-1992 Document: 39 Page: 18 Filed: 09/29/2021