Holding: The PTAB has jurisdiction in an IPR even if the IPR was filed after the expiration of the challenged patent.
Gesture owns US Pat. No. 8,878,949, which pertains to image capture technology and describes a portable device that uses an electro-optical sensor to scan a field of vision and detects user commands, such as a gesture. The ‘949 Patent was subject to an IPR that was filed after its expiration. The PTAB found that claims 1-3, 5-10, and 12-17 were unpatentable and claims 4, 11, and 18 were not unpatentable. The Federal Circuit had affirmed the unpatentability of claims 8-18 in a separate review of an ex parte reexamination decision on these claims. In this case, the Federal Circuit upheld the finding of unpatentability of claim 1-3 and 5-10 and reversed the PTAB’s decision that claim 4 was not unpatentable.
Gesture argued that the PTAB did not have jurisdiction over the IPR because the ‘949 Patent expired in May 2020, and Apple did not file the IPR petition until June 2021. Gesture’s argument was based on the Supreme Court’s decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U.S. 325 (2018), which stated that the “decision to grant a patent is . . . the grant of a public franchise.” However, once the patent expires this public franchise no longer exists since a patentee can no longer prevent others from using their invention. Therefore, after expiration, the patentee’s right is limited to collecting damages, which may only be done through an Article III court and not through the PTAB. According to Gesture, this means that jurisdiction over the expired patent is also similarly limited to an Article III court.
The Federal Circuit disagreed with Gesture and held that the PTAB does have jurisdiction over IPRs concerning expired patents. The Federal Circuit based its decision on the public-rights doctrine, which recognizes that Congress may assign some matters involving public-rights either to the Article III judiciary or to a non-Article III forum, as it deems proper. The Supreme Court analyzed the IPR procedure in view of the public-rights doctrine in Oil States, finding that the grant of a patent inherently involves public rights. An IPR is a second look at the administrative grant of a patent and involves the same public interest that is concerned in the initial grant of the patent. Therefore, an IPR falls within the public-rights doctrine and is not required to be decided by an Article III court.
The fact that the patent has expired does not extinguish the right of the PTAB to take a second look at the USPTO’s decision to issue a patent in an IPR. Even when the patent has expired, the IPR is still the review of an earlier grant of a patent and still inherently involves the adjudication of a public right. It is irrelevant whether the patent has expired, since even an expired patent continues to confer a limited set of rights to the patentee. This limited set of rights includes the right to bring an action for past damages and creates a live case or controversy, and this controversy may be adjudicated by an IPR.
The Federal Circuit also reviewed the PTABs decision to ignore Apple’s expert testimony related to a limitation in claim 4 of the ‘949 Patent. Apple’s expert had put forth an argument in the original petition regarding the claimed limitation and then elaborated on this argument in a supplemental declaration filed after the petition. The PTAB ignored the arguments made in the supplemental declaration since the initial petition did not connect this additional analysis to claim 4. However, the Federal Circuit found that the supplemental expert testimony was sufficiently confined to the argument made in the petition. A party is not barred from elaborating on its arguments on issues previously raised in the initial petition.
Federal Circuit Precedential 
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