PTO Director’s Estoppel Decision Ending Reexam Is Subject to Judicial Review

| Jeremy Anapol


Before Taranto, Chen, and Cunningham. Appeal from the United States District Court for the Eastern District of Virginia.

Summary: The Administrative Procedure Act (APA) permits judicial review of a Patent Office decision vacating an ex parte reexamination based on estoppel. petitioned for inter partes review (IPR) of three patents owned by Vivint. The Patent Trial and Appeal Board (PTAB) upheld the patentability of the claims at issue, and the Federal Circuit affirmed. Subsequently, filed requests for ex parte reexamination of the same patents, based on “grounds that differed from the grounds it had presented in the IPRs.” The Director of the Patent and Trademark Office (PTO) vacated the ex parte reexamination proceedings based on IPR estoppel. sought review of the Director’s vacatur decision in district court under the APA. The district court dismissed’s complaint, finding that the statutory scheme for ex parte reexamination precluded judicial review of the Director’s decision.

The Federal Circuit found that the “text, statutory scheme, and legislative history pertaining to ex parte reexamination do not evince a fairly discernable intent to preclude judicial review” of the Director’s vacatur decision. Thus, the Federal Circuit reversed the dismissal.

Editor: Paul Stewart