Vivint, Inc. v. alarm.com Inc. ( 2021 )

Case: 19-2438 Document: 68 Page: 1 Filed: 04/13/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VIVINT,
Appellant
v.
ALARM.COM INC.,
Appellee
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2019-2438, 2019-2439
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2016-
00116, IPR2016-00173.
______________________
Decided: April 13, 2021
______________________
ROBERT GREENE STERNE, Sterne Kessler Goldstein &
Fox, PLLC, Washington, DC, argued for appellant. Also
Case: 19-2438 Document: 68 Page: 2 Filed: 04/13/2021
2 VIVINT, INC. v. ALARM.COM INC.
represented by JASON DANIEL EISENBERG, WILLIAM
MILLIKEN.
RICHARD J. STARK, Cravath Swaine & Moore LLP, New
York, NY, argued for appellee. Also represented by MARC
KHADPE; DAVID PHILLIP EMERY, WILLIAM MANDIR, Sughrue
Mion PLLC, Washington, DC.
MAI-TRANG DUC DANG, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for intervenor. Also represented by THOMAS W.
KRAUSE, FARHEENA YASMEEN RASHEED.
______________________
Before O’MALLEY, REYNA, and HUGHES, Circuit Judges.
Opinion for the court filed by Circuit Judge O’MALLEY.
Dissenting opinion filed by Circuit Judge Reyna.
O’MALLEY, Circuit Judge.
Vivint appeals from final written decisions in two un-
derlying inter partes review (“IPR”) proceedings. This is
the second appeal relating to these IPRs. Vivint does not
object to the substance of the rulings at issue in this appeal.
Vivint only asks that we vacate and remand the Patent
Trial and Appeal Board’s (“Board’s”) decisions in light of
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed.
Cir. 2019). We have already held that Vivint forfeited this
constitutional challenge. See Order Denying Vivint Inc.’s
Mot. to Vacate and Remand, Vivint, Inc. v. Alarm.com Inc.,
No. 19-2438 (Fed. Cir. Jan. 16, 2020), ECF No. 29. For the
reasons explained below, we reiterate that conclusion and
affirm the Board’s decisions.
I. BACKGROUND
This appeal arises out of Alarm.com’s IPR petitions as-
serting that certain claims of U.S. Patent Nos. 6,147,601
(“the ’601 patent”) and 6,717,513 (“the ’513 patent”) are
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VIVINT, INC. v. ALARM.COM INC. 3
invalid on obviousness grounds. The Board initially found
that Alarm.com had demonstrated that some (but not all)
of the challenged claims were unpatentable. Vivint ap-
pealed the Board’s unpatentability determinations, and
Alarm.com cross-appealed the Board’s patentability deter-
minations.
In Vivint’s first appeal, our court affirmed the Board’s
unpatentability determinations but only affirmed certain
of its patentability determinations. See Vivint, Inc. v.
Alarm.com Inc., 754 F. App’x 999 (Fed. Cir. 2018). As for
the other patentability determinations, we reversed the
Board’s construction of one claim term, vacated the Board’s
patentability conclusions concerning claims containing
that term, and remanded for further proceedings. Id. On
remand, the Board concluded that the remanded claims
were also unpatentable as obvious. See Alarm.com Inc. v.
Vivint, Inc., No. IPR2016-00116, 2019 WL 3331444(P.T.A.B. July 24, 2019); Alarm.com Inc. v. Vivint, Inc., No.
IPR2016-00173, 2019 WL 3330466 (P.T.A.B. July 24,
2019).
Vivint appealed the Board’s decisions on remand. Ap-
proximately six weeks after Vivint filed its second appeal,
we issued our decision in Arthrex, holding that Administra-
tive Patent Judges (“APJs”) constitute “principal officers”
within the meaning of the Appointments Clause and, thus,
must be appointed by the President and confirmed by the
Senate. Arthrex, Inc., 941 F.3d at 1327. Since the America
Invents Act does not follow this appointments scheme, we
remedied this constitutional infirmity by severing part of
Title 35. Id. at 1338. As a practical consequence of this
severance, we vacated the Board’s decision in Arthrex and
remanded it to a different panel of APJs who had been con-
stitutionally appointed. Id. at 1338–1339.
After Arthrex issued, Vivint filed a motion to vacate the
Board’s decisions on remand, arguing that the APJs who
had rendered the opinion were unconstitutionally
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4 VIVINT, INC. v. ALARM.COM INC.
appointed. See Vivint Inc.’s Mot. to Vacate and Remand,
Vivint, Inc., No. 19-2438 (Fed. Cir. Nov. 26, 2019), ECF No.
18. Alarm.com opposed Vivint’s motion, contending that
Vivint had forfeited its Appointments Clause challenge by
failing to raise it in the first appeal and that the mandate
rule barred Vivint’s request. See Alarm.com Opp’n to
Vivint Inc.’s Mot. to Vacate and Remand, Vivint, Inc., No.
19-2438 (Fed. Cir. Dec. 4, 2019), ECF No. 21. The Director
of the United States Patent and Trademark Office ap-
peared as an intervenor and requested that we hold our de-
cision in Vivint’s second appeal pending the outcome of our
en banc consideration of Arthrex. See USPTO Director’s
Opp’n to Vivint Inc.’s Mot. to Vacate and Remand, Vivint,
Inc., No. 19-2438 (Fed. Cir. Dec. 27, 2019), ECF No. 24.
We denied Vivint’s motion. Order Denying Vivint Inc.’s
Mot. to Vacate and Remand, Vivint, Inc., No. 19-2438 (Fed.
Cir. Jan. 16, 2020), ECF No. 29. We found that Vivint had
forfeited its constitutional argument by failing to raise an
Appointments Clause challenge in its first appeal. Id. at 2.
We also rejected Vivint’s argument that we should excuse
its forfeiture on grounds that Arthrex constituted an inter-
vening change in law. Id. (citing Customedia Techs., LLC
v. Dish Network Corp., 941 F.3d 1174 (Fed. Cir. 2019) and
Sanofi-Aventis Deutschland GMBH v. Mylan Pharm. Inc.,
791 F. App’x 916, 928 n.4 (Fed. Cir. 2019), cert. denied, 141
S. Ct. 266 (2020) for the proposition that the arguments
Vivint raised had “been squarely raised and rejected by
this court”).
In its second appeal, Vivint submits arguments that
are almost identical to those it made unsuccessfully in its
motion to vacate and remand. Vivint again argues that, in
light of Arthrex, we should remand this case to constitu-
tionally appointed APJs. Vivint again also contends that
it did not forfeit its Appointments Clause challenge be-
cause Arthrex constituted a significant change in law. It
now also contends that forfeiture should not apply to its
first appeal because Vivint only partially prevailed in the
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VIVINT, INC. v. ALARM.COM INC. 5
underlying IPR proceedings that were the subject of that
appeal. Vivint alternatively argues that, if we do not va-
cate and remand, we should hold this case in abeyance
pending Supreme Court resolution of the constitutional is-
sues Arthrex raised.
II. DISCUSSION
We review constitutional questions de novo. See
Schaeffler Grp. USA, Inc. v. United States, 786 F.3d 1354,
1358 (Fed. Cir. 2015).
Vivint raises two arguments on appeal: (1) Vivint did
not forfeit its Appointments Clause challenge; and (2) we
should hold this case in abeyance pending Supreme Court
review of the Board’s APJ appointment scheme. We ad-
dress each argument in turn. 1
A. Vivint forfeited its Appointments Clause challenge by
not raising it in its first appeal
Vivint argues that, because the APJs who rendered the
Board’s decisions on remand were unconstitutionally ap-
pointed, we should remand this case to a new, constitution-
ally appointed panel. Acknowledging that we have already
ruled that it has forfeited this constitutional challenge,
Vivint attempts to distinguish this case from Customedia,
941 F.3d 1174, and Sanofi-Aventis, 791 F. App’x 916—the
cases we cited in our previous order to support our forfei-
ture conclusion. According to Vivint, Customedia and
Sanofi-Aventis “dealt with forfeiture where a party failed
to raise an Appointments Clause challeng[e] in its opening
brief on appeal; here, Vivint made its Appointments Clause
1 We reject the government’s contention that Vivint
is barred from asking the merits panel to reconsider the
court’s earlier one-judge order. We assess the merits of
Vivint’s arguments anew.
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6 VIVINT, INC. v. ALARM.COM INC.
argument before even filing its opening brief.” Appellant’s
Br. 6 n.1.
We disagree with Vivint. Vivint failed to raise an Ap-
pointments Clause challenge in its first appeal, in which it
contested the Board’s findings of invalidity. This consti-
tutes a forfeiture in light of our positions in Customedia
and Sanofi-Aventis. See Customedia Techs., 941 F.3d at
1175 (“Customedia did not raise any semblance of an Ap-
pointments Clause challenge in its opening brief or raise
this challenge in a motion filed prior to its opening brief.”);
see also Sanofi-Aventis, 791 F. App’x at 928 n.4 (“Our prec-
edent holds that failure to raise the Arthrex Appointments
Clause issue in the opening brief forfeits the challenge.”)
(citations omitted). That Vivint raised an Appointments
Clause challenge in its second appeal, in which it disputed
the Board’s decisions on remand, does not revive its al-
ready forfeited challenge. As we explained in Arthrex, it
was Vivint’s obligation to raise its Appointments Clause
challenge before the first court who could have provided it
relief. Arthrex, 941 F.3d at 1339.
We are sympathetic to the fact that, at the time Vivint
filed its first appeal, we had not yet held that the Board’s
APJs were unconstitutionally appointed. Such a situation,
however, does not “hold parties to a standard of clairvoy-
ance” as Vivint argues. Appellant’s Br. 8. Rather, parties
in these circumstances are free to raise constitutional ar-
guments based on any good faith argument available to it,
including one under the Appointments Clause. Indeed,
Vivint raised a constitutional argument based on the then-
pending Oil States Energy Services, LLC v. Greene’s Energy
Group, LLC, 138 S. Ct. 1365 (2018) case. Vivint notes that
it did this “out of an abundance of caution to preserve its
rights, given that the issue was being actively litigated in
the Supreme Court.” Appellant’s Br. 10 n.2. While failure
to raise a constitutional challenge where similar challenges
are already being litigated presents the most obvious cir-
cumstance in which to find forfeiture, it is not the only such
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VIVINT, INC. v. ALARM.COM INC. 7
circumstance. As Arthrex did, Vivint could have been
among the first to press such a challenge before us.
Once its first appeal was decided, all matters which
could have been raised then—but were not—were fore-
closed. The remand after that first appeal was on one very
narrow ground, and that ground is all that remains to be
litigated in this subsequent appeal. See Amado v. Mi-
crosoft Corp., 517 F.3d 1353, 1360 (Fed. Cir. 2008); see also
Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383
(Fed. Cir. 1999); see also Talasila, Inc. v. United States, 524
F. App’x 671, 673 (Fed. Cir. 2013).
Despite these conclusions—which are consistent with
our positions in Customedia and Sanofi-Aventis—Vivint
asserts that its apparent forfeiture should be forgiven for
two reasons. First, because it is similarly situated to the
appellant in Steuben. And, second, because Arthrex was a
substantial change in the law, which we have held in other
contexts can be grounds to forgive what would otherwise
constitute forfeiture. See, e.g., In re Micron Tech., Inc., 875
F.3d 1091, 1097 (Fed. Cir. 2017) (“[A] sufficiently sharp
change of law sometimes is a ground for permitting a party
to advance a position that it did not advance earlier in the
proceeding when the law at the time was strongly enough
against that position.”) (citing Blonder-Tongue Labs., Inc.
v. Univ. of Illinois Found., 402 U.S. 313, 350 (1971)). Nei-
ther argument persuades us to rethink our earlier conclu-
sions.
Vivint first contends that it did not forfeit its Arthrex
challenge in light of our recent order in Steuben. See Order
Granting Mot. for Recons., Steuben Foods, Inc. v. Nestle
USA, Inc., No. 20-1082 (Fed. Cir. Mar. 30, 2020), ECF
No. 44. According to Vivint, we vacated and remanded the
Board’s decision for proceedings consistent with our deci-
sion in Arthrex even though Steuben’s case was on appeal
for a second time. Vivint argues that our court did not re-
quire Steuben “to raise an Appointments Clause challenge
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8 VIVINT, INC. v. ALARM.COM INC.
in the earlier appeal to preserve it because Steuben was the
prevailing party in that appeal.” Appellant’s Br. 9. Be-
cause Vivint only partially prevailed in the judgments at
issue in its first appeal, Vivint argues that it “should not be
required to have risked its own win by raising an Appoint-
ments Clause challenge on pain of forfeiting the argu-
ment.” Id. at 10.
Vivint’s reliance on Steuben is misplaced. In Steuben,
Nestle lost certain issues before the Board, which it ap-
pealed. See Appellant’s Mot. for Recons. 1–2, Steuben, No.
20-1082 (Fed. Cir. Feb. 13, 2020), ECF No. 36 (“Steuben’s
Motion”). Steuben responded, but did not appeal any is-
sues itself. Our court vacated and remanded the Board’s
decision. See Nestle USA, Inc. v. Steuben Foods, Inc., 884
F.3d 1350 (Fed. Cir. 2018). On remand, the Board ruled
against Steuben on the issues on which it previously had
prevailed, and Steuben then appealed. Appellee’s Resp. to
Mot. to Remand 1–2, Steuben, No. 20-1082 (Fed. Cir. Nov.
15, 2019), ECF No. 17. In this second appeal, Steuben
moved to vacate the Board’s decision in light of Arthrex.
Appellant’s Mot. to Remand 1, Steuben, No. 20-1082 (Fed.
Cir. Nov. 8, 2019), ECF No. 13. We initially ruled, as we
did in our motions order in this case, that Steuben had for-
feited its constitutional challenge by failing to raise it in
the first appeal. See Order Denying Steuben’s Mot. to Re-
mand, Steuben, No. 20-1082 (Fed. Cir. Jan. 30, 2020), ECF
No. 33. Steuben filed a motion for reconsideration, arguing
that it could not have filed a cross-appeal in the first appeal
because it had been the prevailing party before the Board.
See Steuben’s Motion, at 3 (citing Aventis Pharma S.A. v.
Hospira, Inc., 637 F.3d 1341, 1343 (Fed. Cir. 2011) for the
proposition that “[a] cross-appeal may only be filed ‘when a
party seeks to enlarge its own rights under the judgment
or to lessen the rights of its adversary’”). And Steuben
pointed out that, “[a] cross-appeal raising an Appointments
Clause challenge—if successful—would have taken away
[its] rights under a final written decision in its favor.” Id.Case: 19-2438 Document: 68 Page: 9 Filed: 04/13/2021
VIVINT, INC. v. ALARM.COM INC. 9
After considering Steuben’s arguments, we concluded
that, because Steuben had not failed to assert its constitu-
tional challenge before the first court that could provide it
relief, Steuben’s motion for reconsideration should be
granted. We then vacated our original ruling and re-
manded Steuben’s appeal to the Board for proceedings con-
sistent with our decision in Arthrex. See Order Granting
Mot. for Recons., Steuben, No. 20-1082 (Fed. Cir. Mar. 30,
2020), ECF No. 44.
This case is distinguishable from Steuben. Unlike
Steuben, who was the appellee in its first appeal, Vivint
was the appellant/cross-appellee in its first appeal. Vivint’s
status as the appellant in its first appeal is significant.
Steuben was not permitted to seek any affirmative relief in
its first appeal because it was the prevailing party on all
issues on appeal. Were Steuben to successfully cross-ap-
peal on an Appointments Clause challenge in the first ap-
peal, moreover, the resulting vacatur and remand would
have been entirely contrary to Steuben’s interests because,
as the appellee, its sole goal was to urge affirmance of the
Board. Here, by contrast, Vivint was an appellant seeking
affirmative relief. A constitutional challenge to the author-
ity of those who ruled against it on those appealed claims
would support that request. Unlike Steuben, Vivint’s goal,
at least in large part, was to overturn the Board’s rulings.
We turn now to Vivint’s contention that Arthrex was
such a substantial and unanticipated change in the law
that forfeiture should be forgiven. In our motions order, we
rejected this same argument, citing to our decision in
Sanofi-Aventis. While the majority in Sanofi-Aventis nei-
ther mentioned nor discussed the change in the law theory,
and cited nothing in support of its rejection of it, the issue
was both raised by the appellant and highlighted at some
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10 VIVINT, INC. v. ALARM.COM INC.
length by the dissent. 2 We concluded, accordingly, that, in
rejecting the Arthrex challenge there on forfeiture grounds,
the court also must have rejected the appellant’s reliance
on this exception to forfeiture. We continue to believe that
this is the only way to read Sanofi-Aventis. We have sum-
marily rejected the same argument in other non-preceden-
tial decisions as well. See, e.g., Essity Hygiene and Health
AB v. Cascades Canada ULC, Tarzana Enterprises, LLC,
No. 19-1736 (Fed. Cir. Nov. 25, 2019), ECF No. 58; see also
IYM Techs. LLC v. RPX Corp., No. 19-1761 (Fed. Cir. May
8, 2020), ECF No. 53.
We also reject the argument that Arthrex was such a
substantial change in the law that any forfeiture should be
forgiven. Indeed, Arthrex itself goes a long way toward an-
swering the question for us. As we recognized in Micron,
the change in the law exception only applies in circum-
stances where the law was strongly settled against the
later ruling. 875 F.3d at 1097. There we cited, among
many other cases, Blonder-Tongue, 402 U.S. at 350 for the
proposition that forfeiture can be forgiven where an argu-
ment would have been futile under controlling precedent,
and Curtis Publishing Company v. Butts, 388 U.S. 130(1967) for the proposition that waiver can be forgiven
where at the time of trial there was “strong precedent” in-
dicating that the opposite of the new ruling was the law.
Micron, 875 F.3d at 1098; see also Bennett v. City of Ho-
lyoke, 362 F.3d 1, 7 (1st Cir. 2004) (“[W]e will excuse a
party for failing to raise a defense only when the defense,
if timely asserted, would have been futile under binding
precedent.”).
2 In Sanofi-Aventis, we cited only to Customedia.
While Customedia did deal with the question of forfeiture,
the change in the law exception was neither raised nor de-
cided in that case.
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VIVINT, INC. v. ALARM.COM INC. 11
In Micron, we found that the Supreme Court’s ruling
in TC Heartland LLC v. Kraft Foods Group Brands LLC,
137 S. Ct. 1514 (2017) was a sufficient intervening change
in the law to forgive forfeiture. We relied on the fact that
our court had consistently read 28 U.S.C. §§ 1391(c) and
1400(b) differently than the Supreme Court interpreted
those provisions in TC Heartland. Micron, 875 F.3d at
1099–1100. We found significant the fact that the district
court was so clearly bound by our law that it could not have
afforded a party before it any relief not dictated by our pre-
TC Heartland reading of the relevant statutory venue pro-
visions. Id. This case is different from Micron; materially
so.
Arthrex did not change any well-settled or binding
principles of law. Arthrex was the first time our court ad-
dressed an Appointments Clause challenge relating to
PTAB APJ’s. There was no settled law on the point; there
was, in fact, no Federal Circuit law on the point. To the
extent there was analogous law from other circuits, the law
was consistent with where our court landed on the question
in Arthrex. See, e.g., Intercollegiate Broad. Sys., Inc. v. Cop-
yright Royalty Bd., 684 F.3d 1332 (D.C. Cir. 2012) (holding
that the appointments of Copyright Royalty Judges vio-
lated the Appointments Clause and remedying this consti-
tutional defect by vacating and remanding these judges’
determinations after severing their removal protections).
As we said in Arthrex, and as Judge Moore pointed out in
Arthrex II, our decision simply followed well-established
Supreme Court precedent set forth, in among other cases,
Edmond v. United States, 520 U.S. 651 (1997), Free Enter-
prise Fund v. Public Company Accounting Oversight
Board, 561 U.S. 477 (2010), and Lucia v. S.E.C., 138 S. Ct.
2044 (2018). Arthrex, Inc. v. Smith & Nephew, Inc., 941
F.3d 1320, 1327–1334; Arthrex, Inc. v. Smith & Nephew,
Inc., 953 F.3d 760, 762–763 (Fed. Cir. 2020). To the extent
there was any serious academic discussion of the issue,
moreover, the conclusion—long before Arthrex issued—
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12 VIVINT, INC. v. ALARM.COM INC.
presaged our conclusion in Arthrex. John F. Duffy, Are Ad-
ministrative Patent Judges Unconstitutional?, 2007 Pa-
tently-O Pat. L.J. 21, 25 (2007). Given these realities, there
was simply no settled or firmly established principle up-
ended by Arthrex.
As we explained in Ciena Corp. v. Oyster Optics, LLC,
958 F.3d 1157, 1161 (Fed. Cir. 2020), moreover, while
courts have discretion to forgive waivers of non-jurisdic-
tional challenges, such as Appointments Clause chal-
lenges, they also have the discretion to decline to do so. As
we said there, though we forgave forfeiture in Arthrex itself
to address an important, structural question of first im-
pression, we remain free to impose standard principles of
waiver in later cases raising the same challenge. Id. (citing
United States v. Booker, 543 U.S. 220, 268 (2005)). Because
we find that no exception to the standard principles of
waiver apply here, we exercise our discretion not to forgive
Vivint’s forfeiture of its Appointments Clause challenge.
For all these reasons, we find that Vivint forfeited its
Appointments Clause challenge and that no exception for-
gives that forfeiture.
B. We will not hold this case in abeyance pending Su-
preme Court review of the Board’s APJ appointments
scheme
Vivint alternatively argues that we should hold this
case in abeyance pending final resolution of the Appoint-
ments Clause issues presented in Arthrex (or other related
cases). Vivint does not cite any cases to support the propo-
sition that a case should be held in abeyance even when the
appellant has forfeited its Appointments Clause challenge.
Rather, according to Vivint, “[i]f the [Supreme] Court were
. . . to hold that the Arthrex Court’s remedy did not go far
enough to remedy the constitutional violation, Vivint
would unquestionably be entitled to a new hearing before
a constitutionally appointed panel.” Appellant’s Br. 10.
Vivint goes on to argue that “the Arthrex panel’s remedy
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VIVINT, INC. v. ALARM.COM INC. 13
did not remedy the Appointments Clause problem and [] in
any event, the remedy is inconsistent with congressional
intent because it creates an adjudicatory scheme for IPRs
that violates the Administrative Procedure Act.” Id. at 11.
We are unpersuaded by Vivint’s arguments. We al-
ready rejected a challenge to the remedy in Arthrex. Ar-
threx, Inc. v. Smith & Nephew, Inc., 953 F.3d 760 (Fed. Cir.
2020). And, in relation to Vivint’s arguments in this ap-
peal, the Supreme Court has more than once declined to
grant certiorari on the question of whether Arthrex was
such a meaningful change in the law that any forfeiture
should be forgiven. IYM Techs. LLC v. RPX Corp., 796 F.
App’x 752 (Fed. Cir. 2020), cert. denied, No. 20-424, 2020
WL 6701120 (U.S. Nov. 16, 2020); Customedia Techs. LLC
v. Dish Network Corp., 783 F. App’x 1041 (Fed. Cir. 2019),
cert. denied, 141 S. Ct. 555 (2020). Our court has consist-
ently declined to hold cases in abeyance where appellants
have forfeited their Appointments Clause challenges. See,
e.g., Sanofi-Aventis, 791 F. App’x at 928 n.4; Huawei Techs.
Co. v. Iancu, 813 F. App’x 505, 512 n.1 (Fed. Cir. 2020). We
see no reason to depart from our practice here.
III. CONCLUSION
We find that Vivint has forfeited its constitutional chal-
lenge under Arthrex. Given this forfeiture, we decline to
hold this case in abeyance pending Supreme Court review
of the Appointments Clause issues addressed in that deci-
sion. We therefore affirm the Board’s decisions on remand.
AFFIRMED
Case: 19-2438 Document: 68 Page: 14 Filed: 04/13/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VIVINT, INC.,
Appellant
v.
ALARM.COM INC.,
Appellee
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2019-2438, 2019-2439
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2016-
00116, IPR2016-00173.
______________________
REYNA, Circuit Judge, dissenting.
The majority would have all parties be clairvoyant. My
colleagues would require Vivint to have raised an Appoint-
ments Clause challenge on or before November 2, 2017—
Case: 19-2438 Document: 68 Page: 15 Filed: 04/13/2021
2 VIVINT, INC. v. ALARM.COM INC.
the date in which it filed its opening brief in the previous
appeal to this court. See Vivint, Inc. v. Alarm.com Inc.,
No. 17-2218 (Fed. Cir. Nov. 2, 2017), ECF No. 23. That is
two years before Arthrex issued, and nearly one year prior
to the filing of the Arthrex opening brief in October 2018.
See Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140
(Fed. Cir. Oct. 19, 2018), ECF No. 16. The majority thus
faults Vivint for its lack of foresight and holds that any Ar-
threx-based Appointments Clause challenge it may have
had is foreclosed on forfeiture grounds. To support that
proposition, the majority relies on our post-Arthrex deci-
sions in Customedia Technologies, Sanofi-Aventis, Essity,
and IYM Technologies. See Majority Op. at 5, 9–10. But
those cases do not involve an appellant that filed an Ar-
threx-based challenge in its opening brief.
Customedia Technologies created a bright-line forfei-
ture rule that forecloses an Appointments Clause challenge
for appellants that fail to raise the issue in the opening
brief or in a motion filed prior to the opening brief. See
Customedia Techs., LLC v. Dish Network Corp., 941 F.3d
1174, 1175 (Fed. Cir. 2019). Here, Vivint raised the issue
in its opening brief and nearly five months prior to that in
the motion that the court denied. See Order, Vivint, Inc. v.
Alarm.com Inc., No. 19-2438 (Fed. Cir. Jan. 16, 2020), ECF
No. 29. Because Vivint has complied with the Customedia
Technologies rule, I see no reason to depart from the uni-
form application of our precedent.
Litigants “‘cannot be deemed to have waived objections
or defenses which were not known to be available at the
time they could first have been made’[;] . . . the doctrine of
waiver demands conscientiousness, not clairvoyance, from
parties.” Hawknet, Ltd. v. Overseas Shipping Agencies,
590 F.3d 87, 92 (2d Cir. 2009) (internal citations omitted).
This principle applies with equal force in the forfeiture con-
text.
Case: 19-2438 Document: 68 Page: 16 Filed: 04/13/2021
VIVINT, INC. v. ALARM.COM INC. 3
I am also not persuaded that we should depart from
this court’s judgment in Steuben Foods, Inc. v. Nestle USA,
Inc., No. 20-1082, ECF No. 44 (Fed. Cir. Mar. 30, 2020)
merely because this case concerns a partial, rather than
complete victory at the initial Board proceeding. A success-
ful vacatur-and-remand motion based on an Appointments
Clause theory in the first appeal would have led to vacatur
of the entire Board decision, including all determinations
favorable to Vivint. The majority requires that Vivint
should have argued against its own interests in exchange
for the opportunity to challenge an unfavorable-in-part
agency determination. Such a holding is inconsistent with
our post-Arthrex decisions.
With respect, I dissent.