-
Federal Circuit Holds That PTAB Has Jurisdiction To Review Expired Patents
02/04/2025On, January 27, 2025, the United States Court of Appeals for the Federal Circuit affirmed-in-part and reversed-in-part a decision from the Patent Trial and Appeal Board (“PTAB”) on certain claims of Gesture Technology Partners, LLC’s (“Gesture”) U.S. Patent No. 8,878,949 (the ʼ949 patent) and, in so doing, held that the PTAB had jurisdiction to conduct inter partes review (“IPR”) on expired patents.
Apple Inc. (“Apple”) filed IPRs challenging the patentability of Claims 1-18 of the ʼ949 Patent in June 2021, over one year after the ʼ949 Patent expired in May 2020. Gesture argued that the PTAB lacked jurisdiction to institute review based on the Supreme Court’s decision in Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 584 U.S. 325 (2018), asserting that the decision to grant a patent is the grant of a public franchise, and once a patent expires, the public franchise ceases to exist and the patent owner no longer has the right to exclude others. Gesture alleged that, once a patent is expired, the patent owner’s rights are limited to collecting damages that formerly existed through an infringement lawsuit in an Article III court and, therefore, jurisdiction over an expired patent is limited to an Article III court.
The Federal Circuit, in rejecting Gesture’s argument, focused on the public rights doctrine, which allows Congress to assign certain matters to non-Article III forums. Relying on the Oil States decision, the Federal Circuit highlighted that the decision held that the grant of a patent involves public rights because it is the grant of a public franchise. The Federal Circuit then noted that an IPR is essentially a “second look” at the earlier administrative grant of a patent, which involves the public’s interest in ensuring that patent monopolies are kept within their legitimate scope. And the public franchise can be qualified by an agency’s authority to cancel it outside of an Article III court.
The Federal Circuit found Gesture’s argument, therefore, incompatible with the logic of Oil States. The Court noted that the review of an earlier grant of a patent inherently involves the adjudication of a public right, regardless of whether the patent has expired. The Court emphasized that, even after expiration, a patent continues to confer a limited set of rights to the patentee, such as the right to collect damages for past infringement. The Court concluded that the existence of those rights creates a live case or controversy that can be adjudicated by an IPR and in proceedings before the Federal Circuit on appeal.
The Court then affirmed the PTAB’s decision finding claims 1–3 and 5–7 unpatentable because they are obvious over the prior art and reversed the PTAB’s finding that claim 4 is not unpatentable. With respect to claim 4, the Court held that Apple had shown that the PTAB improperly ignored Apple’s expert testimony, and, with that testimony, the record then compelled the conclusion that claim 4 was obvious. The Court did not address the PTAB’s IPR decision regarding claims 8–18 because those claims had been found unpatentable in ex parte reexamination, a determination that the Court upheld in a separate decision.
