PTO Director’s Estoppel Decision Ending Reexam Is Subject to Judicial Review
In Alarm.Com Inc. v. Hirshfeld Appeal No. 21-2102, the Federal Circuit held that the Administrative Procedure Act (APA) permits judicial review of a Patent Office decision vacating an ex parte reexamination based on estoppel.
Alarm.com 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, Alarm.com 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. Alarm.com sought review of the Director’s vacatur decision in district court under the APA. The district court dismissed Alarm.com’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.
Preliminary Negotiation or Commercial Offer for Sale?
In Larry G. Junker v. Medical Components, Inc. Appeal No. 21-1649, the Federal Circuit held that a letter containing specific delivery conditions, risk allocations and payment terms may constitute a commercial offer for sale despite being sent in response to a “request for quotation.”
Larry Junker sued Medical Components, Inc. for infringement of a design patent related to a catheter sheath. The parties filed cross-motions for summary judgment as to the issue of whether a letter sent before the critical date of the patent was a commercial offer for sale. In granting Mr. Junker’s motion for summary judgement of no invalidity, the district court determined that the letter was not a definite offer based on the multiple uses of the term “quotation.” After a bench trial, the court found infringement and awarded Mr. Junker damages.
The Federal Circuit reversed the district court’s grant of summary judgment of no invalidity. While acknowledging that the term “quote” can support a finding that a communication is not a definite offer, the Federal Circuit held that the mere presence of the term is not dispositive. The terms of a communication must be considered in their entirety when determining if the communication constitutes an offer for sale or merely an invitation to negotiate. In this case, the Federal Circuit found that the letter constituted an offer for sale because it contained pricing, delivery condition, and risk allocation terms—all terms necessary for an offer. The Court also noted that the letter was addressed specifically to one recipient, signaling that it was not an unsolicited price quotation. The presence of the necessary terms for an offer outweighed that the letter used the word “quote” on multiple occasions, was missing some quantity and product terms, and was sent in response to a “request for quotation.”