Federal Circuit Precedential

Holding:  The estoppel provision of Section 315(e)(1) does not apply to ex parte reexaminations that were brought before a final written decision was issued in a concurrent IPR.  The Patent Office has jurisdiction over ex parte reexaminations concerning expired patents.

Gesture appealed an ex parte reexamination decision from the USPTO affirming the unpatentability of claims 1-30 of US Patent No. 7,933,431.  The ‘431 Patent is directed to a method and apparatus for sensing movement and using that motion as input to control a handheld device, car, or video game.  The ex parte reexamination was requested by Samsung in November 2021.   While reexamination was pending, the ‘431 Patent was also subject to two IPRs, one brought by Unified Patents LLC, an organization of which Samsung is a member.  The IPRs were resolved before the completion of reexamination, and all claims of the ‘431 Patent except for claims 11 and 13 were found to be invalid. 

After the PTAB issued its final written decision in the IPR brought by Unified Patents, Gesture petitioned to terminate the still-pending ex parte reexamination asserting that Samsung was estopped from maintaining the reexamination proceeding under 35 U.S.C. § 315(e)(1).   However, this petition was denied by the USPTO, and claims 11 and 13 were found to be invalid as anticipated by US Patent No. 5,982,853.

Section 315(e)(1) states that “The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”  Gesture argued that by continuing to pursue the ongoing ex parte reexamination, Samsung was maintaining a proceeding before the USPTO in violation of Section 315.

However, the Federal Circuit did not agree with Gesture’s interpretation of Section 315.  A petitioner for an ex parte reexamination requests reexamination and may file a reply if the patent owner files a statement, but the petitioner does not maintain the proceeding.  Once an ex parte reexamination is requested, the USPTO, not the petitioner, maintains the proceeding.  Therefore, the Federal Circuit held that the estoppel provision of Section 315(e)(1) does not apply against the USPTO as to ongoing ex parte reexamination of patents that have been subject to a final written decision in a concurrent IPR.

Gesture also argued that the PTAB lacked jurisdiction to invalidate the ‘431 Patent on reexamination because the patent had expired.  However, the Federal Circuit found this to be a similar issue as already addressed in a previous Gesture case. [1]  In that case, Gesture challenged the PTAB’s jurisdiction to invalidate an expired patent in an IPR.  The Federal Circuit found that the PTAB had jurisdiction because even after expiration, the patent owner retains some rights, such as the right to receive damages for past actions.  This creates a live case or controversy that can be adjudicated by an IPR.  The same reasoning applies to jurisdiction over ex parte reexaminations.  Because a patent owner may still collect damages for past infringement on patents that have expired, the PTAB has jurisdiction over ex parte reexaminations concerning expired patents.

Full Opinion (PDF)

[1] Apple Inc. v. Gesture Tech. Partners, LLC, 127 F.4th 364 (Fed. Cir. 2025)