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Federal Circuit Rejects Estoppel And Expired Patent Arguments And Affirms Finding of Anticipation
12/17/2025The United States Court of Appeals for the Federal Circuit reviewed an appeal from the Patent Trial and Appeal Board’s decision in an ex parte reexamination of U.S. Patent No. 7,933,431, owned by Gesture Technology Partners, LLC. The decision interpreted provisions of 35 U.S.C. § 315(e)(1), affirmed the PTAB’s decision to invalidate two claims in Gesture’s patent on motion-sensing technology, and confirmed the Board’s authority to rule on expired patents.
Case Background
The ’431 Patent is directed to a method and apparatus for motion-sensing technology. Samsung Electronics Co. requested an ex parte reexamination of the patent, which request was granted. In parallel, two inter partes reviews (filed by Apple Inc. and a member-based organization to improve patent quality) successfully invalidated all but two claims (claims 11 and 13). Gesture subsequently petitioned to terminate the ex parte reexamination on the grounds that, because Samsung was a party to the Unified Patents IPR, it was estopped under 35 U.S.C. § 315(e)(1) “from ‘maintain[ing] a proceeding’ at the Patent Office challenging the ’431 patent on grounds it could have raised in the IPR.” The ex parte reexamination ultimately resulted in finding the two remaining claims invalid.
Gesture Improperly Interpreted the Estoppel Provision of 35 U.S.C. § 315(e)(1)
The Federal Circuit held that “the estoppel provision of 35 U.S.C. § 315(e)(1) is inapplicable against the Patent Office to ongoing ex parte reexamination proceedings.” Specifically, the Court rejected Gesture’s argument that Samsung was estopped from “maintaining” a proceeding at the Patent Office that it could have raised in the IPR. The Court clarified that, although a third party may “request” a reexamination, it is the Patent Office, not the third party, that “maintains” it.
Claims 11 and 13 Affirmed as Anticipated
The Federal Circuit rejected Gesture’s argument that the Board erred in finding claims 11 and 13 anticipated by a piece of prior art. Gesture asserted that the prior art did not disclose a specific limitation. The Court disagreed, finding that substantial evidence supported the Board’s decision that the limitation was disclosed.
The Patent Office has Jurisdiction over Expired Patents
Gesture’s argument that the Board had no jurisdiction to invalidate the ’431 patent because it was expired was rejected by the Court, which explained, “We have previously rejected similar arguments with respect to IPRs because a patentee maintains some rights, such as the right to bring an action for past damages after its patent expires, thus creating a live case or controversy, which can be adjudicated by an IPR and in proceedings before this court on appeal.” The Court explained that Gesture offered no arguments as to why ex parte reexamination proceedings should be treated differently than IPRs and that the same reasoning should apply.
