The Patent Trial and Appeal Board Has Jurisdiction Over IPRs Challenging Expired Patents

APPLE INC. v. GESTURE TECHNOLOGY PARTNERS, LLC.

Before Lourie, Dyk, and Hughes. Appeals from the United States Patent and Trademark Office.

Summary: The Patent Trial and Appeal Board has jurisdiction over IPRs concerning expired patents because the review of such patents involves adjudication of a public right.

Apple filed an IPR petition challenging an expired Gesture patent relating to image-capture technology.  The Board concluded that challenged claims 1-3 and 5-7 were unpatentable as obvious, but declined to find claim 4 unpatentable.  Apple appealed and Gesture cross-appealed.

Gesture argued that the Board did not have jurisdiction over the IPR because the ’949 patent expired before Apple filed its petition.  The Federal Circuit rejected this argument because review of a patent involves the adjudication of a public right, and even an expired patent confers a limited set of rights on the patentee.  Notably, Gesture failed to explain why an IPR, which could affect the patentee’s ability to recover damages for infringement that occurred during the life of the patent, should fall outside the scope of the public-rights doctrine, merely because the patentee’s prospective right to exclude others has terminated.

The Federal Circuit also affirmed the Board’s conclusion that claims 1-3 and 5-7 were unpatentable, but reversed the Board’s conclusion that claim 4 was not unpatentable.  Apple argued the Board had improperly ignored its expert’s supplemental testimony which, if considered, showed that the claimed relationship between certain components would have been desirable.  The Board had refused to consider the expert’s supplemental testimony because it was not contained in the Apple’s petition.  The Federal Circuit disagreed, ruling that Apple’s expert had simply expanded on an argument expressly raised in the petition.  The Federal Circuit further held that, in view of the expert’s supplemental testimony, there could be no reasonable dispute that claim 4 was unpatentable as obvious.

Editor: Sean Murray