Alarm.com Wins Federal Circuit Reversal in Ongoing APA Challenge

On February 24, 2022, the United States Court of Appeals for the Federal Circuit issued a precedential decision in favor of Cravath client Alarm.com Incorporated (“Alarm.com”), finding that a lawsuit filed by Alarm.com challenging actions of the U.S. Patent and Trademark Office (“USPTO”) was properly brought in federal district court, reversing the district court’s dismissal.

In early 2021, Alarm.com filed a complaint in federal district court challenging under the Administrative Procedure Act (“APA”) the USPTO’s application of the estoppel provisions of 35 U.S.C. § 315(e)(1) to certain ex parte reexamination requests filed by Alarm.com in 2020. The district court dismissed the complaint, ruling that the Patent Act’s statutory scheme impliedly precluded judicial review of the USPTO’s application of the federal statute. Alarm.com appealed, arguing that the district court misapplied the presumption of judicial review under the APA and failed to consider that the only relevant statutory provision did not expressly bar judicial review of estoppel determinations under § 315(e)(1). The Federal Circuit agreed, reversing the decision of the district court and remanding for proceedings on the merits of Alarm.com’s APA claims.

The Cravath team included partner Sharonmoyee Goswami, who argued the appeal on behalf of Alarm.com, now retired partner Richard J. Stark and practice area attorney Matthew J. Boggess.

The case is Alarm.com Incorporated v. Andrew Hirshfeld, et al., No. 21‑2102 (Fed. Cir.).