Patent Lawyer Blog
The U.S. Court of Appeals for the Federal Circuit delivered a noteworthy ruling on Jan. 27, 2025, definitively establishing that the Patent Trial and Appeal Board (PTAB) retains jurisdiction to conduct inter partes review (IPR) proceedings even after patents have expired. The decision in Apple Inc. v. Gesture Technology Partners, LLC, 127 F.4th 364 (Fed. Cir. 2025) provides important clarity for future post-expiration challenges.
The Jurisdictional Challenge
Gesture Technology Partners, the patent owner, mounted an aggressive jurisdictional challenge arguing that the PTAB lacked authority to review its expired patent. The company’s U.S. Patent No. 8,878,949, covering camera-based gesture recognition technology, had expired in May 2020—more than a year before Apple filed its IPR petition in June 2021.
Gesture’s argument hinged on an interpretation of the Supreme Court’s 2018 decision in Oil States Energy Services v. Greene’s Energy Group. The company contended that because Oil States characterized patents as “public franchises,” and because expired patents no longer grant the right to exclude others, the “public franchise ceases to exist” upon expiration. With only limited rights remaining—primarily the ability to collect past damages—Gesture argued that jurisdiction shifted exclusively to Article III federal courts.
The Federal Circuit’s Response
Writing for a three-judge panel, Circuit Judge Timothy B. Dyk systematically dismantled Gesture’s jurisdictional argument, finding it “incompatible with the Court’s logic in Oil States.” The court emphasized that the Supreme Court’s reasoning in Oil States was specifically grounded in the concept that IPR proceedings represent “a second look at an earlier administrative grant of a patent.” This fundamental characterization, the Federal Circuit explained, focuses on the review of the original grant decision rather than the current scope of patent rights. “The 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,” the court stated, “since the patent itself continues to confer a limited set of rights to the patentee.”
Prior Precedent and Legal Foundation
The Federal Circuit noted that while this was the first time it had “squarely addressed” the jurisdictional question, the court had previously reviewed IPR decisions involving expired patents without questioning the PTAB’s authority. The decision cited cases including Immunex Corp. v. Sanofi-Aventis U.S. LLC and Axonics, Inc. v. Medtronic, Inc. as examples where expired patent IPRs proceeded without jurisdictional challenges. The court grounded its analysis in the well-established public rights doctrine, which allows Congress to assign certain matters to non-Article III forums. As the court explained, the Supreme Court has long held that Congress has authority to assign to administrative bodies those matters “arising between the government and others, which from their nature do not require judicial determination and yet are susceptible of it.”
Practical Implications for Patent Practice
The ruling has significant practical implications for patent practitioners and patent owners.
For Patent Challengers: The decision provides certainty that IPR proceedings can continue against expired patents, potentially allowing challenges to patents that might otherwise escape administrative review. This is particularly valuable given that IPR proceedings are generally faster and less expensive than federal court litigation.
For Patent Owners: The ruling means that patent expiration does not provide a safe harbor from PTAB review. Patent owners must now consider that their expired patents remain vulnerable to administrative challenges, which could affect their ability to pursue infringement damages for past violations.
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.