Bizarre Facts Beget Bizarre Result

Before the Federal Circuit's recent decision in In re Vivint, Inc., Appeal 2020-1992 (Fed. Cir. Sept. 29, 2021), the Patent Trial and Appeal Board affirmed a reexamination examiner's final rejection of Vivint's patent claims as unpatentable over prior art. In due course, the Patent Office would have issued a certificate canceling those claims. But Vivint appealed the Board's decision, not because the examiner's/Board's decisions were substantively incorrect, but because the Office should not have ordered reexamination. The AIA's revisions to the Patent Act give the Board discretion to deny inter parties review and deny requests for ex parte reexamination that present "the same or substantially the same prior art or arguments previously ... presented to the Office." 35 U.S.C. § 325(d). Because the Board exercised that discretion to deny an earlier inter partes review, the court held the examiner had no authority-much less discretion-to later grant and conduct