This morning the Federal Circuit issued two precedential opinions and one nonprecedential opinion. The first precedential opinion resulted from an appeal from the Patent Trial and Appeal Board, and in the opinion the court addressed when ex parte reexamination is available to a requester who has already made the same arguments in an inter partes review proceeding. The second precedential opinion resulted from an appeal from the Armed Services Board of Contract Appeals, and in the opinion the court addressed issues related to government contract claims. The nonprecedential opinion resulted in another appeal from the PTAB. Here are the introductions to the opinions.

In re Vivint, Inc. (Precedential)

In 2011, Congress passed the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284 (codified 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 post-issuance 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). While the ex parte reexamination in this case was based on substantial new questions of patentability, the Patent Office abused its discretion and acted arbitrarily and capriciously under § 325(d). Thus, we vacate and remand with instructions for the Patent Office to dismiss.

Triple Canopy, Inc. v. Secretary of the Air Force (Precedential)

Triple Canopy, Inc. (“Triple Canopy”), appeals the decision of the Armed Services Board of Contract Appeals (“Board”) that denied six consolidated appeals brought by Triple Canopy under the Contract Disputes Act of 1978, 41 U.S.C. § 7101 et seq. (“CDA”). Triple Canopy, Inc., ASBCA Nos. 61415, 61416, 61417, 61418, 61419, 61420, 20-1 BCA ¶ 37,675. The Board denied the appeals after concluding that the claims asserted in them were time-barred because they were not submitted to the contracting officer within six years of when they accrued, as required by 41 U.S.C. § 7103(a)(4)(A). Because we conclude that the Board erred as a matter of law in determining when Triple Canopy’s claims accrued, we reverse and remand.

Supercell Oy v. Gree, Inc. (Nonprecedential)

Appellant Supercell Oy appeals a final written decision of the Patent Trial and Appeal Board that certain claims of Supercell’s patent are unpatentable as obvious under 35 U.S.C. § 103. On appeal, Supercell challenges the Board’s obviousness determination largely on the basis that the Board erred in rejecting Supercell’s claim construction argument. We affirm.