On January 27, in Apple Inc. v. Gesture Technology Partners, LLC, the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) has jurisdiction to conduct inter partes reviews (IPRs) over patents that have expired.
The patent at issue, U.S. Patent No. 8,878,949, owned by Gesture Technology Partners (Gesture Tech), was directed to an image capture technology device employing an electro-optical sensor for detecting gestures. Apple initiated an IPR proceeding to examine the ’949 patent. The PTAB found that 15 of the patent’s 18 claims were unpatentable. Gesture Tech appealed the PTAB’s findings as to the 15 unpatentable claims, while Apple appealed the PTAB’s findings as to the 3 claims that were not found to be unpatentable. Central to this case is the fact that the ’949 patent expired in May 2020 and Apple did not file their petition until June 2021, well after the expiration of the patent. On appeal, Gesture Tech raised the argument that the “Board lack[ed] jurisdiction in IPRs over patents after their expiration.”
Gesture Tech cited Oil States Energy Services, LLC v. Greene’s Energy Group, LLC as the backbone of their argument. The Supreme Court in Oil States found that the “decision to grant a patent is . . . the grant of a public franchise” and that once the patent expires “the public franchise ceases to exist and the patent owner no longer has the right to exclude others.” Gesture Tech claimed this must be interpreted to mean that the patentee’s rights in an expired patent are effectively limited to simply “collecting damages that formerly existed through an infringement action” and that jurisdiction over the expired patent is reduced to only Article III courts. The Federal Circuit was not swayed, however.
The Federal Circuit admitted that no prior cases have explicitly addressed this exact issue, but pointed out that they have “implicitly assum[ed]” that the PTAB had jurisdiction in such cases. This stems from the fact the Federal Circuit has previously reviewed IPR decisions that included expired patents. The Federal Circuit emphasized the Supreme Court’s finding in Oil States that the “Board’s jurisdiction over IPRs does not run afoul of Article III under the public-rights doctrine.” Ultimately, the Federal Circuit found that Gesture Tech’s argument is at odds with the holding of Oil States. The public franchise does not cease to exist after a patent expires. As the Federal Circuit puts it, “[t]he review of an earlier grant of a patent thus inherently involves the adjudication of a public right, and it is irrelevant whether the patent has expired, since the patent itself continues to confer a limited set of rights to the patentee.” While the patentee retains fewer rights after the expiration of a patent, they still retain some rights. Post-expiration rights are still capable of creating controversy that can be seen before the PTAB in an IPR.
The Federal Circuit’s decision is significant in that it clarifies the timing validity of IPR proceedings and the jurisdiction of the Board—the term status of a granted patent is irrelevant for purposes of an IPR and the PTAB has jurisdiction to oversee expired patents.
For more information on this ruling, please contact Fitch Even associate Christopher W. Paulson, author of this alert.
Fitch Even IP Alert®
Christopher W. Paulson
Christopher W. Paulson is a registered patent attorney whose intellectual property law practice encompasses patent preparation and prosecution and IP litigation. He has worked with clients ranging from smaller technology enterprises to large corporations, many in the medical device, chemical, food products, and agricultural industries.