Serial Filing of IPRs and as Reexamination

In re Vivint, Inc. (Fed. Cir. 2021)

Vivint sued for infringing its US Patent 6,717,513. responded with three different inter partes review (IPR) petitions.  Those three petitions were denied at the institution stage.  Two of the petitions were denied on the merits, the third petition was denied based upon the “abusive” IPR filing practices of (noting that there were 15 total IPRs filed involving ‘incremental petitioning’).

A year later petitioned for ex parte reexamination of the ‘513 patent.  Most of the reexamination petition was word-for-word identical to the IPR petitions, although there was one new reference added for two of the four patentability questions.  The PTO ordered the examination and eventually concluded that that the challenged claims were not patentable.

Inter Partes Review and Ex Parte Reexamination both involve an initial threshold stage where the patent office must decide whether the petition presents a sufficient case to move forward with the full review.  But, the standard for IPR is much higher than that of reexamination.  IPR’s are only initiated upon a finding of a “reasonable likelihood” that at least one claim will be cancelled while reexaminations require only a “substantial new question of patentability.”  Thus, it logically makes sense that a challenge might fail the IPR threshold, but still be sufficient to surpass the reexam requirement.

On appeal, the Federal Circuit offers an interesting opinion.  On the one hand, the court agreed that a substantial new question of patentability was presented in the reexam.  At the same time, the court found that the PTO abused its discretion in hearing the reexamination.

SNQP: Here, the decision was easy once the court ruled that the “new” portion focused on whether a particular issue had been previously decided on the merits.  Although the same questions had been presented in the IPR petitions, denial of an IPR doesn’t count as deciding the issue on the merits.

Discretion to Deny: The reexamination statute provides the PTO with discretionary authority to reject petitions based upon questions previously presented to the office.  35 U.S.C. § 325(d).  The most interesting part of the decision here is the ruling that sometimes discretionary denial becomes mandatory — when denial would be “an abuse of discretion or arbitrary and capricious.”

Here, the court looked to the dismissal of the last IPR petition based upon “’s abusive filing practices.” should not then be allowed to take the same approach in yet another new incremental filing — even if the new petition was in reexamination form.

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.

Slip Op.

Cancellation of Vivint’s claims is Vacated.



25 thoughts on “Serial Filing of IPRs and as Reexamination

  1. 5

    We should go back to where the patent office can only issue patents. The same agency granting and revoking propert rights has worked out to be as corrupt and chaotic as logic dictated it would.

    1. 5.1

      We should go back to where the patent office can only issue patents.

      Agreed. It would be better (not essential, but better) for the IPR/PGR system to be moved over to the Art. III branch as a special class of patent-only district courts that handle only bench trials. The FRCP would need to be amended to allow for the streamlined discovery and case management of the PTAB, but these are not insuperable difficulties. At the same time, the governing statutes should be amended to require stay of the infringement trial while the “IPR/PGR” district court hears the validity challenges.

      It is a bad incentive structure to let the USPTO collect one set of fees for granting an invalid patent and then another set of fees for pulling the invalid claims back out of circulation. Move the cancellation function over to the branch that is properly insulated from political pressure. That is the better way to do it.

      1. 5.1.1

        “It is a bad incentive structure to let the USPTO collect one set of fees for granting an invalid patent and then another set of fees for pulling the invalid claims back out of circulation.”

        It’s a bad incentive structure for the USPTO to collect fees for granting patents, period. Those who only care about half the problem don’t really care about the problem.



          You are an arse.

          Those are not fees collected for profit.

          Half the problem ?

          You don’t know the half of it — literally.


          Cogent comment on incentive. If the sole Constitutional basis for granting patents is the public benefit of progress in science and the useful arts, the public ought to be footing the bill for that public benefit, not the so-called “users” who are actually providing the progress.

          But I’m not holding my breath for Congress to give up the revenue stream or empower the PTO to give true value to issued patents — or for the Scotus reactionaries to issue one single rational opinion regarding patents or intellectual propery.

          (Or any other topic, for that matter. Where’d that windmill go? I need something to tilt at … )


            I agree that in an ideal world, the PTO would not be operated off user fees. I’d happily support efforts to implement this.

            Short of that, you could eliminate the USPTO’s incentive to grant by keeping the fees but truly disconnecting the PTO’s funding from the revenue it generates. That way congress keeps the money while changing the USPTO incentive structure.


            e sole Constitutional basis for


            The term “Quid Pro Quo” is used for a reason, and ANY such Constitutional basis FULLY recognizes that a deal between TWO parties is in effect.

            To think ONLY of “public benefit” is a non-starter.

  2. 4

    This is a a salutary development. IPRs are supposed to make the process of patent enforcement faster and cheaper by simplifying issues. They were never meant to be a mechanism for delay and complication—no more than ex parte re-exams.

    If an issue is addressed by the PTAB in an IPR petition, then it is not—in any meaningful sense—a “new” question of patentability. The CAFC is quite right to hold as such.

    Slowly but surely, sanity is being restored to the post-grant challenge landscape.

  3. 3

    The Court appears to acknowledge that a Director could still initiate reexamination on his own initiative under 35 U.S.C. § 303. It seems unlikely that the Acting Director will here, but if the Office believes that a patent is invalid, then there is at least some argument that he should. If a Director is not going to exercise this authority against a patent that has been adjudged unpatentable following a PTAB appeal, then when should be exercise it?

    1. 3.1

      Yes, a PTO Director can initiate a reexamination on his own initiative under 35 U.S.C. § 303, but rarely does. I got the impression talking about that to a PTO official a few years ago that they would only be interested in doing so for patents that were media-embarrassing to the PTO.

      1. 3.1.1

        The only Director-initiated re-examines i remember are when the junior examiner used his SPE’s stamp to issue his own patents to make quota. All those were re-examined. Director-initiated re-exams are a loss of revenue. But this one is a good test case to determine whether the PTO cares about issuing invalid patents. With an acting director with bigger problems, I’m guessing not.


          A nice post from my shifting- historical pseudonym’d friend.

          On topic, without ad hominem and with a touch of personal insight.

          That touch of personal insight does raise my curiosity though, and I wonder (again), what was your role at the patent office before you retired?

  4. 1

    Good step toward addressing abuse of USPTO revocation proceedings

    Point of contention. The IPR reasonable likelihood standard in practice is much lower than SNQP. This was one of the many surprises of the AIA. The IPR threshold is very close to zero, as any number of pieces of prior art cobbled together with a declaration obtained by bribing a PhD in the field meets the threshold. IPRs are frequently instituted where no SNQP is raised.

    1. 1.1

      The IPR reasonable likelihood standard in practice is much lower than SNQP. This was one of the many surprises of the AIA.

      During the run-up of the AIA, this point was discussed, and the fact of the matter is that the ‘new standard’ was supposed to be a higher threshold.

    2. 1.2

      > The IPR reasonable likelihood standard in practice
      > is much lower than SNQP

      I assumed this was a typo because this statement is not even remotely close to being true. “Substantial new question” (SNQ) is remarkably forgiving, historically resulting in the PTO granting or instituting 95%+ percent of reexaminations.

      Reasonable likelihood of prevailing (RLP) is far more demanding. For example, during the last year of inter partes reexam from 2011-2012, the standard was changed from SNQ to RLP, and that directly resulted in a drop in the percentage of inter partes reexam requests that were granted by the Office. District courts also relied on the change from SNQ to RLP as an additional factor in staying infringement actions, because the PTO finding an RLP indicated a greater likelihood that the challenged claims would be actually cancelled at the end of the proceeding. The whole reason that ex parte reexamination was instituted in the Vivint case, but not IPR, was because reexam institution was governed by the more forgiving SNQ standard. There is absolutely no basis to argue that RLP is a lower standard.

      Ex parte reexamination still uses the SNQ standard, and as of the most recent PTO statistics from 03/2021, the grant rate is still above 92%. That’s orders of magnitude higher than the institution rate for IPR, even during the early heyday of 2012-2014 when Patent Owners were calling the PTAB a patent death squad.

      1. 1.2.2

        They are different populations going in. IPRa are often instituted on the same or substantially the same prior art as examination. There is no requirement to identify a SNQP in an IPR. And reasonable likelihood only requires an expert declaration that it would have been obvious to combine 3 or 4 of the references (or equivalents) from the IDS. It is pretty much at the floor. A decent attorney and a typical PTAB panel needing to make their points is all that is required.


          A decent attorney and a typical PTAB panel needing to make their points is all that is required.

          If that is the case, why is the PTAB instituting 58% of IPR/PGR petitions in FY2021 YTD, but 92% of ex parte re-exam petitions? The numbers just do not bear out your hypothesis.


            I am not sure. I am shocked reexams are so high. The IPR rate does not account for discretionary denials. But that doesn’t explain it. Is it really 92%? That is shocking.

            My experience and investigations are mostly AIA proceedings, where I observe many institutions on grounds that lack a SNQP.


              Is it really 92%? That is shocking

              The data (straight from the USPTO) are linked below. The institution rates simply are not consistent with the idea that IPRs have a lower standard for institution. Clearly IPRs have the higher threshold (even if you believe that they should be higher still).

              link to

      2. 1.2.3

        Thanks for the factual rebuttal LR. It is irrefutable that the institution rate for reexamination requests is vastly higher than for IPRs. Also, if the IPR petition institution threshold was so low they would not have such a high percentage of corresponding final decisions and their being sustained by the Fed. Cir. While routine rants and conspiracy theories here have no legal or political effect, their repetitions, if left un-rebutted, might mislead some readers. Unusual serious abuses can and do get corrected as this one was, and can also lead to attorney fee award sanctions.


          if left un-rebutted, might mislead some readers

          Exactly the way I feel about many comments from you and the other Anti’s, Paul.

    3. 1.3

      The Federal Circuit said otherwise in VirtualAgility:

      link to

      Congress made postgrant review more difficult to obtain than reexamination by raising the standard from “a substantial new question of patentability,” 35 U.S.C. § 303(a) (2012), to “more likely than not … unpatentable,” id. § 324(a).

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