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
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 patent,” 35 U.S.C. § 301(a)(1), as well as certain patent owner statements, § 301(a)(2). And “[a]ny person at any time may file a re- quest for reexamination . . . of any claim of a patent on the basis of any prior art cited under [§ 301].” § 302; see also 37 C.F.R. § 1.510. Normally, “[w]ithin three months fol- lowing the filing of a request for reexamination . . . , the Di- rector will determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request.” § 303(a). If the Director deter- mines “pursuant to [§ 303(a)] that no substantial new ques- tion of patentability has been raised,” that determination “will be final and nonappealable.” § 303(c). If, however, “the Director finds that a substantial new question of pa- tentability affecting any claim of a patent is raised, the de- termination will include an order for reexamination of the patent for resolution of the question.” § 304. After a reexamination is ordered, the patent owner “may file a statement on [the substantial new question of patentability identified by the Director], including any amendment to his patent and new claim or claims he may wish to propose, for consideration in the reexamination.” Id. If the patent owner files such a statement, he must serve a copy of it “on the person who has requested reex- amination,” who, in turn, “may file and have considered in the reexamination a reply.” Id. The statute does not Case: 21-2102 Document: 38 Page: 4 Filed: 02/24/2022
provide for any involvement of the requester in the reex- amination after the optional reply. See § 305; see 37 C.F.R. § 1.550(g) (“The active participation of the ex parte reexam- ination requester ends with the reply . . . and no further submissions on behalf of the reexamination requester will be acknowledged or considered.”). The reply aside, the reexamination is “conducted according to the procedures established for initial examination” of patent applications. § 305. Once the reexamination is completed, “[t]he patent owner . . . may appeal . . . any decision adverse to the pa- tentability of any original or proposed amended or new claim of the patent” to the Patent Trial and Appeal Board; and if unsuccessful at the Board, the patent owner may ap- peal to this court. § 306; §§ 134(b), 141(b); 37 C.F.R. § 90.3(a). One other provision is central to the issue presented to us—one of the two estoppel provisions of the IPR scheme set out in chapter 31 of Title 35, U.S. Code. The provision at issue here is § 315(e)(1), which states: The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the [PTO] with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. 35 U.S.C. § 315(e)(1). A similar provision, not at issue here, provides for estoppel, on similar terms, of specified civil ac- tions and other proceedings. § 315(e)(2). B In 2015, Vivint, Inc. sued Alarm.com for infringement of three patents, U.S. Patent Nos. 6,147,601, 6,462,654, and 6,535,123, in the District Court for the District of Utah. See Complaint at 5–10, Vivint, Inc. v. Alarm.com Inc., Case: 21-2102 Document: 38 Page: 5 Filed: 02/24/2022
ALARM.COM INCORPORATED v. HIRSHFELD 5
No. 2:15-cv-00392 (D. Utah June 2, 2015), ECF No. 2. In response, Alarm.com filed numerous petitions for inter partes reviews, which resulted in three final written deci- sions in 2017, all of which were reviewed by this court in Vivint, Inc. v. Alarm.com Inc., 754 F. App’x 999 (Fed. Cir. 2018). As relevant here, we affirmed the Board’s determi- nation that Alarm.com had not carried its burden of prov- ing unpatentable claim 19 of the ’601 patent, claim 18 of the ’123 patent, and claims 17, 18, 22, 25, and 28 of the ’654 patent. Id. at 1006–07 & n.7. Nevertheless, in June 2020, Alarm.com filed three re- quests for ex parte reexamination of those very claims un- der 35 U.S.C. § 302 and 37 C.F.R. § 1.510, presenting grounds that differed from the grounds it had presented in the IPRs. J.A. 109–97 (’601 request); J.A. 199–318 (’123 request); J.A. 320–546 (’654 request). The PTO initially assigned control numbers and filing dates to the requested reexamination proceedings. But on August 7, 2020, the Of- fice of Patent Legal Administration—which we call the Di- rector 1—issued three decisions vacating the proceedings instead of making § 303(a) determinations on the presence of substantial new questions of patentability. J.A. 45–67 (’601 decision); J.A. 69–90 (’123 decision); J.A. 92–107 (’654 decision). In each decision, the Director focused on the certifica- tion Alarm.com had submitted under 37 C.F.R. § 1.510(b)(6), which requires that a reexamination request include “[a] certification by the third party requester that the statutory estoppel provisions of 35 U.S.C. [§] 315(e)(1) . . . do not prohibit the requester from filing
1 Alarm.com states in its APA complaint that the Of- fice of Patent Legal Administration was “acting on behalf of the Director,” J.A. 15, and it has not contested the exist- ence or validity of the Director’s delegation of authority. Case: 21-2102 Document: 38 Page: 6 Filed: 02/24/2022
the ex parte reexamination request.” 2 The Director set forth a “Clarification of General Policy and Practice” for ap- plying § 315(e)(1)’s estoppel precondition that a particular ground of unpatentability asserted against a particular claim be one that was “raised or reasonably could have [been] raised” in the prior IPR involving the same claim (where the reexamination requester was the IPR peti- tioner, or a real party in interest or privy of the IPR peti- tioner). See, e.g., J.A. 55–57. Applying the statute and the General Policy, the Director found that Alarm.com reason- ably could have raised its reexamination grounds in the IPRs and so was estopped under § 315(e)(1) from submit- ting each of its ex parte reexamination requests, a conclu- sion that made the certifications under 37 C.F.R. § 1.510 incorrect. See, e.g., J.A. 52–65. On that basis, the Director vacated the filing dates of each request, as well as each pro- ceeding as a whole. See, e.g., J.A. 65–66 (citing 37 C.F.R. § 1.510(d); MPEP § 2227(b)). The Director did not conclude that Alarm.com’s requests failed to raise a “substantial new question of patentability.” See § 303(a). On February 12, 2021, Alarm.com filed a complaint in the United States District Court for the Eastern District of Virginia against the Director, in his official capacity, and the PTO. Alarm.com filed its complaint under the APA, which provides that “[a] person suffering legal wrong be- cause of agency action, or adversely affected or aggrieved by agency action within the meaning of a relevant statute, is entitled to judicial review thereof.” 5 U.S.C. § 702. Alarm.com asserted that the Director’s three decisions va- cating each ex parte reexamination proceeding were final agency actions and were unlawful and should be set aside
2 The regulation also requires certification regarding 35 U.S.C. § 325(e)(1), which is the estoppel provision of the scheme for post-grant reviews set out in chapter 32 of Title 35, U.S. Code. That provision is not at issue here. Case: 21-2102 Document: 38 Page: 7 Filed: 02/24/2022
ALARM.COM INCORPORATED v. HIRSHFELD 7
because the actions or underlying findings or conclusions were “arbitrary, capricious, an abuse of discretion, or oth- erwise not in accordance with law,” § 706(2)(A), and “in ex- cess of statutory jurisdiction, authority, or limitations, or short of statutory right,” § 706(2)(C). See J.A. 16, 38–42. In its prayer for relief, Alarm.com also requested a perma- nent injunction preventing the PTO from applying the General Policy “to grounds presented in any future re- quests or petitions.” J.A. 43. The government moved to dismiss the complaint under Federal Rule of Civil Procedure 12(b)(1) for lack of jurisdic- tion. First, the government argued that Alarm.com’s APA claims come within 5 U.S.C. § 701(a)(1), which creates an exception to APA review where “statutes preclude judicial review.” Memorandum of Law in Support of Defendants’ Motion to Dismiss at 2, 10–17, Alarm.com Inc. v. Hirshfeld, No. 1:21-cv-170 (E.D. Va. Apr. 23, 2021), ECF No. 19 (also citing §§ 702 and 703 as providing support for preclusion). Second, the government argued that Alarm.com lacked standing to seek an injunction against application of the PTO’s general policy and practice “to grounds presented in any future requests or petitions before the Patent Office.” Id. at 2, 17–18 (citation omitted). On June 22, 2021, the district court entered an order dismissing Alarm.com’s suit. The court reasoned that re- view of Alarm.com’s challenge to the vacatur decisions based on estoppel was precluded by the ex parte reexami- nation statutory scheme. Alarm.com, 2021 WL 2557948, at *2–3. And the court concluded that Alarm.com lacked standing to the extent it was seeking broad prospective re- lief against the General Policy, since “[t]he agency action that allegedly harmed [Alarm.com] was the denial of the ex parte reexamination, not the issuance of the policy.” Id. at Case: 21-2102 Document: 38 Page: 8 Filed: 02/24/2022
*3. The district court therefore dismissed for lack of juris- diction. 3 Alarm.com timely appeals. We have jurisdiction pur- suant to 28 U.S.C. § 1295(a)(1). The only issue we decide is the reviewability of the three specific vacatur rulings, an issue that presents a substantial question of patent law and therefore is governed by our own law, rather than re- gional circuit law. Odyssey Logistics & Tech. Corp. v. Iancu, 959 F.3d 1104, 1108 (Fed. Cir. 2020). We decide the propriety of the district court’s dismissal here, which pre- sents only a legal question, de novo. Id. II
The district court concluded, and the government ar- gues on appeal, that the overall ex parte reexamination scheme precludes judicial review of the Director’s vacatur decisions based on 35 U.S.C. § 315(e)(1) estoppel, bringing Alarm.com’s challenge to those decisions within the excep- tion to APA review applicable where “statutes preclude ju- dicial review.” 5 U.S.C. § 701(a)(1). The government does not contend that judicial review under the APA is unavail- able because the agency actions in question are “committed to agency discretion by law.” 5 U.S.C. § 701(a)(2); see Oral Arg. at 26:55–28:08. Nor does the government present any developed argument that APA review is unavailable be- cause there are “other adequate remed[ies] in . . . court,”
3 The preclusion-of-review conclusion entailed lack of jurisdiction because, if APA review is unavailable due to statutes precluding review, the APA’s waiver of sovereign immunity does not apply, and without an applicable waiver of sovereign immunity, no jurisdiction exists to entertain the challenge. See, e.g., Brownback v. King, 141 S. Ct. 740, 749 (2021); United States v. Mitchell, 463 U.S. 206, 212, 215 (1983); Hostetter v. United States, 739 F.2d 983, 985 (4th Cir. 1984). Case: 21-2102 Document: 38 Page: 9 Filed: 02/24/2022
ALARM.COM INCORPORATED v. HIRSHFELD 9
5 U.S.C. § 704, whether because of the availability of man- damus review under 28 U.S.C. § 1651 or otherwise. When determining whether a statute precludes judicial review, we apply a “‘strong presumption’ in favor of judicial review.” Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016) (quoting Mach Mining, LLC v. EEOC, 575 U.S. 480, 486 (2015)); see also SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018). Although a statute need not explic- itly state that judicial review is unavailable for preclusion to be found, the presumption of reviewability may be over- come only by “clear and convincing indications, drawn from specific language, specific legislative history, and infer- ences of intent drawn from the statutory scheme as a whole, that Congress intended to bar review.” Cuozzo, 579 U.S. at 273 (cleaned up); see also SAS, 138 S. Ct. at 1359; Bowen v. Michigan Academy of Family Physicians, 476 U.S. 667, 671–73 (1986). In Block v. Community Nutrition Institute, the Supreme Court explained: In the context of preclusion analysis, the “clear and convincing evidence” standard is not a rigid eviden- tiary test but a useful reminder to courts that, where substantial doubt about the congressional intent exists, the general presumption favoring ju- dicial review of administrative action is controlling. That presumption does not control in cases . . . [where] the congressional intent to preclude judi- cial review is “fairly discernible” in the detail of the legislative scheme. 467 U.S. 340, 351 (1984); see also Kucana v. Holder, 558 U.S. 233, 251–52 (2010). Under those standards, we conclude, Alarm.com’s APA challenge to the Director’s vacatur decisions based on es- toppel is not precluded. The text, statutory scheme, and legislative history pertaining to ex parte reexamination do not evince a fairly discernable intent to preclude judicial review of these decisions. Case: 21-2102 Document: 38 Page: 10 Filed: 02/24/2022
A The only portion of the ex parte reexamination statu- tory scheme that expressly precludes judicial review is § 303(c), but the preclusion established by that text is nar- rowly defined. The provision states: “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.” § 303(c). The gov- ernment agrees that “section 303(c) . . . concededly does not expressly bar Alarm.com’s challenge.” Gov’t Br. 39. The Director’s estoppel determinations did not include any de- termination that no substantial new question of patenta- bility had been raised. The estoppel determinations made under § 315(e)(1) here are outside the scope of § 303(c). The sole express textual preclusion in the ex parte reexamina- tion scheme does not support preclusion here. The Supreme Court has called attention to the fact that § 303(c) is limited in scope, contrasting it with the broader preclusion provision of the IPR scheme. In Thryv, Inc. v. Click-to-Call Technologies, LP, the Court addressed whether § 314(d)—which states that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable”—bars judicial review of the Director’s decision to institute an IPR when that decision is challenged as contrary to § 315(b)’s time prescription. 140 S. Ct. 1367, 1370 (2020). The Court held that § 314(d) does preclude such review, because the timing issue comes within the standard previously adopted in Cuozzo—that an issue be “closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” Id. at 1373 (quot- ing Cuozzo, 579 U.S. at 275). In so holding, the Court relied on the contrast between § 314(d)’s broad language and the narrower language of § 303(c). Id. at 1375–76 (stating that in § 314(d) “Congress chose to shield from appellate review the determination ‘whether to institute an inter partes Case: 21-2102 Document: 38 Page: 11 Filed: 02/24/2022
ALARM.COM INCORPORATED v. HIRSHFELD 11
review under this section’” and “[t]hat departure in lan- guage suggests a departure in meaning”). The Supreme Court in Thryv rejected this court’s con- trary view about § 314(d) and the IPR timing rule it set forth in Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc). See Thryv, 140 S. Ct. at 1372, 1375 (discussing Wi-Fi One). Notably, the dissenters in Wi- Fi One stressed the limited scope of § 303(c), expressly con- cluding that it “specifically bars review of the narrow issue of whether the request raises a ‘substantial new question of patentability’ [and] . . . does not bar review of the entire decision to initiate reexamination.” 878 F.3d at 1380–81 (Hughes, J., dissenting, joined by Lourie, Bryson, and Dyk, JJ.). More recently, in In re Vivint, Inc., we noted two other limits on the scope of § 303(c), stating that the provision “does not apply to a determination that a substantial new question of patentability has been raised” and “does not ap- ply to a determination under 35 U.S.C. § 325(d).” 14 F.4th 1342, 1350 n.5 (Fed. Cir. 2021). Section § 325(d) permits the Director, when “determining whether to institute or or- der” ex parte reexaminations (among other proceedings), to “take into account whether, and reject the . . . request be- cause, the same or substantially the same prior art or ar- guments previously were presented to the [Patent] Office.” In In re Vivint we both concluded that § 325(d) decisions are outside § 303(c) and rejected the government’s submis- sion that such decisions are committed to the agency’s dis- cretion and hence unreviewable under 5 U.S.C. § 701(a)(2). 14 F.4th at 1350–51. We conclude that § 303(c) does not apply to the estoppel decisions at issue here. Such an application would breach the provision’s textual limits and would be contrary to the just-discussed decisions addressing § 303(c). It also would run counter to precedents adhering to the textual limits of other non-reviewability provisions in Title 35. See SAS, 138 S. Ct. at 1359–60 (holding that § 314(d) did not bar re- view of consistency of Board’s policy of partial institutions Case: 21-2102 Document: 38 Page: 12 Filed: 02/24/2022
with § 318(a), where the challenge was to how the Board acts once an IPR is instituted, not to the institution deci- sion itself); Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018, 1025–27 (Fed. Cir. 2021) (holding that § 314(d) does not bar review of estoppel determinations under § 315(e)(1) based on post-institution events); In re AT&T Intellectual Property II, L.P., 856 F.3d 991, 995–96 (Fed. Cir. 2017) (holding that the non-reviewability provision of the pre- IPR inter partes reexamination scheme did not apply to the issue of whether institution was improper in the absence of a requester or request, where the non-reviewability provi- sion applied only to the Director’s determination of “whether ‘the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims chal- lenged in the request’” (quoting 35 U.S.C. §§ 312(a), (c) (version effective between Sept. 16, 2011, and Sept. 15, 2012))); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1049–51 (Fed. Cir. 2017) (holding that, under the now-expired scheme for covered business method pa- tents, § 324(e) did not bar review of post-institution estop- pel determinations under § 325(e)(1)). B The government argues that the ex parte reexamina- tion scheme as a whole clearly demonstrates a congres- sional intent to deprive requesters like Alarm.com of all rights of judicial review, an intent that would include bar- ring review of the Director’s application of § 315(e)(1). The government stresses that Congress specified what can be reviewed (only decisions adverse to patentability in an or- dered reexamination proceeding, § 306), who can seek judi- cial review (only patent owners, id.), where judicial review can be sought (only in this court following an appeal to the Board, §§ 134(b), 141(b)), and when (within the time al- lowed by PTO regulations (63 days of the Board decision), § 142; 37 C.F.R. § 90.3(a)). See Gov’t Br. 23–27. Those pro- visions, the government contends, implicitly preclude Case: 21-2102 Document: 38 Page: 13 Filed: 02/24/2022
ALARM.COM INCORPORATED v. HIRSHFELD 13
judicial review of any kind if sought by the requester when the requester is not the patentee. In answer to the question of why § 303(c) exists if such an inference from the rest of the scheme is clear, the government assigns the provision a belt-and-suspenders role for Director denials of non-pa- tentee requests when the denials are on no-new-substan- tial-question grounds (though not otherwise) and also a role in denying review when the requester is the patentee. See, e.g., Gov’t Br. 37. We reject the government’s argument that this statu- tory scheme is one that clearly and convincingly estab- lishes non-reviewability in the respect at issue. At bottom, the government urges that the scheme precludes a re- quester from obtaining review of a determination outside § 303(c)’s express terms (i.e., a determination not to launch an ex parte reexamination for reasons other than the lack of a substantial new question of patentability) simply be- cause § 306 and its associated provisions affirmatively grant only to patent owners a right to review of a different determination (i.e., a decision adverse to patentability in an ordered reexamination proceeding). This basis is insuf- ficient to overcome the presumption of reviewability as a matter of recognized principle and precedent. The principle was expressed by the Supreme Court in Sackett v. EPA when it said: “[I]f the express provision of judicial review in one section of a long and complicated statute were alone enough to overcome the APA’s presump- tion of reviewability for all final agency action, it would not be much of a presumption at all.” 566 U.S. 120, 129 (2012); see also Bowen, 476 U.S. at 674 (“The mere fact that some acts are made reviewable should not suffice to support an implication of exclusion as to others.” (cleaned up)). 4 And
4 See also Miami Free Zone Corp. v. Foreign Trade Zones Bd., 22 F.3d 1110, 1112 n.2 (D.C. Cir. 1994); Ala- meda County v. Weinberger, 520 F.2d 344, 347–48 (9th Cir. Case: 21-2102 Document: 38 Page: 14 Filed: 02/24/2022
the principle is especially strong where Congress has af- firmatively included a bar on review of certain determina- tions and that express bar does not encompass the determination in question (as is true of § 303(c), see supra Section II.A). See Texas v. United States, 787 F.3d 733, 755–56 (5th Cir. 2015) (“The [Immigration and Nationality Act] has numerous specific jurisdiction-stripping provi- sions that would be rendered superfluous by application of an implied, overarching principle prohibiting review.”). The cases on which the government relies do not sup- port the inference it asks us to draw in the present case. First, in United States v. Erika, the Court held that the Medicare statute, which expressly provided for judicial re- view of awards under Part A, implicitly precluded review of awards under Part B, because there was a strong enough parallel between Part A and Part B that the lack of a re- view provision for Part B awards was meaningful. 456 U.S. 201, 206–08 (1982); see also Sackett, 566 U.S. at 130 (char- acterizing Erika). Here, there is no sufficient parallelism between a decision about the initiation of an ex parte reex- amination and the ultimate decision in the reexamination itself, which are distinct decisions relating to distinct phases of the reexamination proceeding. See Gov’t Br. 28; supra Section I.A. As a result, Erika’s reasoning does not support the preclusion of judicial review of decisions relat- ing to the initiation of an ex parte reexamination (beyond what is precluded by § 303(c)) simply because review rights were granted (in limited circumstances) for the ultimate decision in the reexamination under § 306. Second, in Block, the Court held that the Agricultural Marketing Agreement Act of 1937, which expressly allowed milk handlers to obtain judicial review of milk market
1975); Consolidated-Tomoka Land Co. v. Butz, 498 F.2d 1208, 1210 (5th Cir. 1974); Artichoke Joe’s v. Norton, 216 F. Supp. 2d 1084, 1113 (E.D. Cal. 2002). Case: 21-2102 Document: 38 Page: 15 Filed: 02/24/2022
ALARM.COM INCORPORATED v. HIRSHFELD 15
orders, implicitly precluded milk consumers from obtaining said review of milk market orders. 467 U.S. at 345–52. But, as explained in Sackett, Block stands only for the prop- osition that when a “particular agency action is reviewable at the instance of one party, who must first exhaust admin- istrative remedies, the inference that it is not reviewable at the instance of other parties, who are not subject to the administrative process, is strong.” 566 U.S. at 129–30 (first emphasis added; second emphasis in original); see also Block, 467 U.S. at 349. Here, the “particular agency action” governed by §§ 306, 134(b), and 141(b) is the ulti- mate decision reached after an initiated ex parte reexami- nation has been conducted. Block at most supports the conclusion that those provisions implicitly preclude re- questers from seeking judicial review of that particular agency action. See Syntex (U.S.A) Inc. v. U.S. Patent & Trademark Office, 882 F.2d 1570, 1573–75 (Fed. Cir. 1989). Block does not support the conclusion that by granting only to patent owners review of the ultimate decision of the reexamination in § 306, Congress additionally precluded requesters from seeking review of decisions relating to the initiation of an ex parte reexamination beyond those cov- ered by § 303(c). Third, in United States v. Fausto, the Court held that the Civil Service Reform Act (CSRA), which excluded cer- tain “nonpreference eligible” employees from the statute’s Merit Systems Protection Board (MSPB) and Federal Cir- cuit review scheme, also implicitly precluded the same non- preference-eligible employees from seeking review through a separate action in the United States Claims Court for “the type of personnel action covered” by the CSRA. 484 U.S. 439, 447–49 (1988). Fausto cannot support preclusion here. Like Block, Fausto could at most suggest, for the ex parte reexamination scheme, that because requesters are excluded from §§ 306, 134(b), and 141(b), they cannot in- voke extrastatutory processes to obtain review of the ulti- mate decision reached after the full reexamination. Case: 21-2102 Document: 38 Page: 16 Filed: 02/24/2022
Fausto, like Block, does not suggest that §§ 306, 134(b), and 141(b) imply nonreviewability of decisions relating to the initiation of an ex parte reexamination. Fourth, and finally, in Elgin v. Department of the Treasury, the Court, again interpreting the CSRA, held that because the CSRA spells out an MSPB and Federal Circuit review scheme in “painstaking detail” for certain covered employees, those covered employees are implicitly precluded from seeking extrastatutory review. 567 U.S. 1, 10–16 (2012); cf. Block v. North Dakota, 461 U.S. 273, 285– 86 (1983) (similar). Applied to the ex parte reexamination statutory scheme, Elgin’s reasoning suggests at most that patent owners cannot resort to paths outside those of §§ 306, 134(b), and 141(b) to obtain review of decisions ad- verse to patentability reached in an initiated ex parte reex- amination. But beyond its characterization of cases like Fausto, Elgin does not shed light on what implications may be drawn for the review rights of other interested persons like requesters. Moreover, to the extent the government contends that we can draw Elgin-like preclusion implica- tions from (1) the “opportunity to obtain a judicial determi- nation of whether estoppel applies in [a] related context” under § 315(e)(2) and (2) mandamus relief potentially available to requesters under 28 U.S.C. § 1651, see Gov’t Br. 40–41, we disagree. Although § 315(e)(2) permits a court to conduct a similar estoppel inquiry (to bar court ac- tions after IPRs) as the one the PTO conducts under § 315(e)(1) (to bar agency proceedings after IPRs), § 315(e)(2) does not provide ex parte reexamination re- questers with a mechanism for review of agency determi- nations under § 315(e)(1). And inferring statutory preclusion not from the ex parte reexamination statutory scheme, but only from the availability of mandamus relief, would eviscerate the presumption of reviewability. When we turn from Supreme Court decisions to deci- sions of our court, we likewise find no persuasive support for the conclusion that the ex parte reexamination Case: 21-2102 Document: 38 Page: 17 Filed: 02/24/2022
ALARM.COM INCORPORATED v. HIRSHFELD 17
statutory scheme precludes requesters from seeking review of decisions like the one at issue here. Our closest case is Syntex, in which Syntex requested an ex parte reexamina- tion of another’s patent, which the Patent Office ordered. 882 F.2d at 1571. The reexamination proceeded, but (ac- cording to Syntex) the process contained irregularities. Id. After the final determination on the merits in the reexam- ination, Syntex sued in district court under the APA. Id. at 1572. The district court dismissed the action, and we affirmed, holding that “Congress intended to limit appeals from final reexamination decisions to those initiated by pa- tent owners seeking to reverse an unfavorable decision” and the fact “[t]hat the decision is attacked here on proce- dural grounds does not make it any less a challenge to the final reexamination decision.” Id. at 1572–1574, 1576 (em- phasis added). In other words, applying Block and Fausto- like reasoning, Syntex holds only that § 306 bars requesters from obtaining review of the decision reached after the ex parte reexamination is conducted—a bar that extends to review of procedural irregularities if they amount to an at- tempt to set aside the outcome of the reexamination. But, for the reasons already discussed, Block-Fausto preclusion does not extend as far as this case, where Alarm.com does not seek review of the outcome of reexamination. In fact, Syntex itself confirms the importance of this distinction in its discussion of Ethicon, Inc. v. Quigg, 849 F.2d 1422 (Fed. Cir. 1988). In Syntex, we characterized Ethicon as “recogniz[ing], sub silencio, that the requester ha[s] a right to have a reexamination proceed, once insti- gated, and that the district court ha[s] jurisdiction to vin- dicate that right.” 882 F.2d at 1574. We said that “[n]othing in the statute addressed review of the type of is- sue raised by the Ethicon plaintiff,” and we contrasted the situation presented in Syntex and found preclusion because “the statute provides for review of the reexamination deci- sion and expressly limits such review.” Id. Here, too, noth- ing in the statute directly addresses review of the Case: 21-2102 Document: 38 Page: 18 Filed: 02/24/2022
particular agency decision challenged by Alarm.com, leav- ing the presumption of reviewability applicable to this sit- uation. See Sackett, 566 U.S. at 129–30. 5 The other two cases on which the government primar- ily relies likewise leave it short of adequate support. In Pregis Corp. v. Kappos, this court held that the presump- tion of reviewability does not allow a third party to bring an APA suit to challenge the PTO’s decision to issue a pa- tent. 700 F.3d 1348, 1356–61 (Fed. Cir. 2012). And in Ex- ela Pharma Sciences, LLC v. Lee, this court held the same for the PTO’s decision to revive a previously abandoned pa- tent application. 781 F.3d 1349, 1352–53 (Fed. Cir. 2015). In both cases, however, the plaintiffs had no statutory role and no statutory right to vindicate and were instead seek- ing APA review of an agency determination (on the validity of a patent) that was subject to other statutorily prescribed forms of review, i.e., inter partes review, post-grant review, ex parte reexamination, declaratory judgment actions, de- fenses to patent infringement. Pregis, 700 F.3d at 1358– 59; Exela, 781 F.3d at 1352–53. In other words, applying Elgin-type reasoning, we held that the Patent Act implic- itly precluded APA review because those same third par- ties were granted other review mechanisms. See also Security People, Inc. v. Iancu, 971 F.3d 1355, 1361–63 (Fed. Cir. 2020) (discussing and applying Elgin); Personal Audio, LLC v. CBS Corp., 946 F.3d 1348, 1352–53 (Fed. Cir. 2020) (same). But, for the reasons already discussed, Elgin logic is not applicable here, as the ex parte reexamination
5 We need not treat Ethicon as precedential to reach any holding in this opinion. See Lewis v. Casey, 518 U.S. 343, 352 n.2 (1996) (“[T]he existence of unaddressed juris- dictional defects has no precedential effect.”); see also Au- tomated Merchandising Sys., Inc. v. Lee, 782 F.3d 1376, 1381 (Fed. Cir. 2015); United States v. County of Cook, 170 F.3d 1084, 1088 (Fed. Cir. 1999). Case: 21-2102 Document: 38 Page: 19 Filed: 02/24/2022
ALARM.COM INCORPORATED v. HIRSHFELD 19
scheme does not provide other mechanisms of review for the Director’s § 315(e)(1) estoppel determination. In light of this case law, we reject the government’s con- tention that the ex parte reexamination statutory scheme provides clear and convincing evidence that Congress in- tended to preclude judicial review of determinations like this one, not expressly barred by § 303(c). Even if the gov- ernment’s interpretation is plausible, at least equally plau- sible is that Congress intended to preclude only (1) challenges to determinations under § 303(a) that no substantial new question of patentability has been raised, see § 303(c), and (2) challenges to the final determination, except those of the patent owner as provided for in §§ 306, 134(b), and 141(b), see Syntex, 882 F.2d at 1574—perhaps in order to keep review rights for requesters commensurate with their role at each stage of the proceedings. A re- quester, in other words, could enforce the request rights concerning initiation granted by Congress, subject to § 303(c), with the rest of the process left to the Director and patent owner, consistent with the fact that Congress did not grant requesters post-initiation rights in this scheme. The government suggests that this interpretation pre- sents at least a theoretical potential for “anomalous re- sults”—a requester might have six years, under 28 U.S.C. § 2401(a), in which to bring an APA action in any district court to challenge an estoppel-based decision against initi- ation, whereas patent owners must adhere to the strictures of 35 U.S.C. §§ 306, 134(b), and 141(b) and 37 C.F.R. § 90.3(a), with a much shorter statute of limitations. See Gov’t Br. 35–36; see also id. at 41–42 (additionally arguing that it would be anomalous for ex parte reexamination re- questers to have certain review rights over initiation, whereas IPR petitioners have comparatively restricted rights under § 314(d)). We have no reason to think that any such anomalies, if more than theoretical at all, are suf- ficiently substantial to meet the high standard of justifying a conclusion that, with no review-precluding text, Congress Case: 21-2102 Document: 38 Page: 20 Filed: 02/24/2022
nevertheless clearly intended to preclude review in these circumstances. See Shady Grove Orthopedic Assocs., P.A. v. Allstate Ins. Co., 559 U.S. 393, 414 n.13 (2010) (“The pos- sible existence of a few outlier instances does not prove [that an] interpretation is absurd.”); Exxon Mobil Corp. v. Allapattah Servs., Inc., 545 U.S. 546, 565 (2005) (“The omission may seem odd, but it is not absurd.”); Antonin Scalia & Bryan A. Garner, Reading Law: The Interpreta- tions of Legal Texts 237–38 (2012) (stating that the absurd result must be one that “no reasonable person could intend” and that a “drafter’s failure to appreciate the effect of cer- tain provisions” is not sufficient). C Finally, as with the textual and statutory-scheme evi- dence, legislative history does not support an inference of congressional intent to bar review of the determination in question here. The government’s strongest evidence is a statement from a House report authored by the Judiciary Committee accompanying H.R. 6933, the enacted version of which created the ex parte reexamination procedure in 1980. Referring to the “Commissioner,” which was the title of the PTO’s head before it was changed to “Director” in 2000, see Helfgott & Karas, P.C. v. Dickinson, 209 F.3d 1328, 1329 n.1 (Fed. Cir. 2000), the report states: Subsection 303(c) makes final and nonappealable a decision by the Commissioner not to conduct reex- amination. . . . No one would be deprived of any le- gal right by a denial by the Commissioner of a request for reexamination. A party to a reexami- nation proceeding could still argue in any subse- quent litigation that the PTO erred and that the patent is invalid on the basis of the cited prior art. H.R. Rep. No. 96-1307, pt. 1, at 7 (1980), as reprinted in 1980 U.S.C.C.A.N. 6460, 6466. In contrast, the report notes that § 306 “grants a patent owner the right to pursue Case: 21-2102 Document: 38 Page: 21 Filed: 02/24/2022
ALARM.COM INCORPORATED v. HIRSHFELD 21
the same appeal routes available to patent applicants” should “an adverse decision” result. Id. at 7–8. But even if the Committee report’s language could overcome the presumption of reviewability in the absence of structural features of enacted text of the sort reflected in the cases, there is no reason to infer that the Committee in 1980 was referring to anything other than the ex parte reexamination scheme it was adopting at the time. The scheme being enacted provided for PTO determination of whether a substantial new question of patentability was presented, but the estoppel and multiplicity provisions that now apply, see §§ 315(e)(1), 325(d), (e)(1), were added to the statute only well after the 1980 enactment. The Commit- tee report is best understood to be addressing the non-ini- tiation determination for which Congress was enacting a textual bar to review (i.e., § 303(c)), not to be proclaiming (let alone enacting) a preclusion of review of non-initiation decisions yet unavailable. Furthermore, in 2011, Congress enacted the America Invents Act (AIA), which included § 315(e)(1), and yet it chose to make no substantive modification to § 303(c). See Pub. L. No. 112-29, § 6, 125 Stat. 284, 301–02, 311–13 (2011). Indeed, Congress left § 303(c) intact even as it was enacting a broad non-reviewability bar in the new IPR sys- tem, see § 314(d) (“The determination by the Director whether to institute an inter partes review under this sec- tion shall be final and nonappealable.” (emphasis added)), which broadened the corresponding bar in the inter partes reexamination system being replaced, see 35 U.S.C. § 312(c) (versions effective between Nov. 29, 1999 and Sept. 15, 2012) (“A determination by the Director under subsec- tion (a) shall be final and non-appealable.” (emphasis added)). Moreover, Congress left § 303(c) intact, even though it did modify (albeit modestly) other portions of the ex parte reexamination scheme. E.g., AIA, § 6(h), 125 Stat. at 312–13 (amending 35 U.S.C. §§ 303(a), 306). The reten- tion of § 303(c)’s limitation on its preclusion of review Case: 21-2102 Document: 38 Page: 22 Filed: 02/24/2022
weakens any case for the required congressional intent, particularly under the current statute, to preclude review for requester challenges to non-initiation beyond what is stated in § 303(c).
The government also points to the history of other re- view schemes, Gov’t Br. 32–33, but no persuasive support for the government’s position here is found in the cited his- tory. Specifically, the government contends that it is nota- ble that, while never amending § 306 to grant ex parte reexamination requesters the right to appeal ultimate de- terminations, Congress has chosen to provide such rights in other proceedings. See American Inventor’s Protection Act, § 4604, Pub. L. No. 106-113, 113 Stat. 1501, 1501A- 569 (1999) (creating 35 U.S.C. §§ 315(b), (c) (version effec- tive between Nov. 29, 1999 and Nov. 1, 2002), which al- lowed inter partes reexamination requesters to appeal “any final decision favorable to the patentability,” while also im- posing an estoppel provision); Pub. L. No. 107-273, § 13106, 116 Stat. 1758, 1900–01 (2002) (modifying 35 U.S.C. § 315(b)(1) (version effective between Nov. 2, 2002 and Sept. 15, 2012), such that inter partes reexamination re- questers could also appeal directly to this court); 35 U.S.C. §§ 141–44, 319, 329 (granting IPR and post-grant review challengers the right to appeal the final written decision). This evidence is not weighty. That Congress twice granted requesters more review rights over final determinations in the now-repealed inter partes reexamination scheme, and has granted IPR and post-grant review requesters more re- view rights over final determinations, says little of signifi- cance about Congress’s intent regarding requester review rights concerning initiation for ex parte reexaminations.
In these circumstances, we conclude, the legislative history evidence, like the statutory scheme evidence, is too weak to supplant the text and the accompanying presump- tion of judicial review for the estoppel determination in question. Cf. Milner v. Dep’t of the Navy, 562 U.S. 562, 572 Case: 21-2102 Document: 38 Page: 23 Filed: 02/24/2022
ALARM.COM INCORPORATED v. HIRSHFELD 23
(2011) (“We will not . . . allow[] ambiguous legislative his- tory to muddy clear statutory language.”). Accordingly, we hold that review of the Director’s § 315(e)(1) estoppel deci- sions here is available to Alarm.com under the APA. III In addition to determining that the ex parte reexami- nation statutory scheme precluded Alarm.com’s APA chal- lenge to the decisions to vacate the ex parte reexamination proceedings (a ruling we now reverse), the district court de- termined that Alarm.com lacked standing to pursue a sep- arate APA challenge to the PTO’s General Policy, a ruling that Alarm.com also appealed. Alarm.com, 2021 WL 2557948, at *3; Alarm.com Br. 41–45. At oral argument in this court, however, Alarm.com clarified that it was with- drawing any separate, “facial” challenge to the General Policy should we hold that it may pursue its §§ 706(2)(A), (C) challenges to the vacatur decisions themselves (includ- ing the General Policy “as applied”)—challenges Alarm.com undisputedly has standing to pursue. See Oral Arg. at 11:23–14:12; J.A. 616. Because the premise of that withdrawal is met by our non-preclusion holding, we do not reach the standing question concerning the now-with- drawn “facial” challenge. We do not opine on what might be the appropriate remedy if Alarm.com succeeds on its §§ 706(2)(A), (C) challenges to the decisions themselves. IV For the foregoing reasons, we reverse the district court’s determination that Alarm.com’s 5 U.S.C. §§ 706(2)(A), (C) claims challenging the Director’s decisions to vacate the ex parte reexamination proceedings are pre- cluded. We do not reach the district court’s ruling on stand- ing. We remand for further proceedings consistent with this opinion. The parties shall bear their own costs. REVERSED IN PART AND REMANDED