In a significant ruling, the U.S. Court of Appeals for the Federal Circuit has rejected an argument that the Patent Trial and Appeal Board (PTAB) lacks jurisdiction to conduct an inter partes review (IPR) on expired patents. This decision clarifies that the PTAB’s authority is not tied to whether a patent is active or expired, emphasizing that the review of expired patents still involves the adjudication of public rights.
The case at hand involved Gesture, a company that had been granted a patent for its image capture technology, which triggers a digital camera to capture an image when a specific motion or gesture is detected in the visual field. Apple challenged the patent’s validity, filing a petition with the PTAB for IPR on the grounds that the invention was obvious. The PTAB partially agreed with Apple, determining that some of Gesture’s claims were unpatentable due to obviousness.
Following the PTAB’s decision, both parties cross-appealed to the Federal Circuit. Gesture contested the findings of unpatentability, while Apple sought to have the remaining claims invalidated. Gesture further argued that since the patent had expired, only Article III courts—not the PTAB—had jurisdiction to review the patent.
However, the Federal Circuit rejected Gesture’s jurisdictional challenge, affirming the PTAB’s authority. The court explained that while an expired patent grants fewer rights than an active one, it still confers a protectable interest. Drawing from the 2018 Supreme Court case Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the court reasoned that the grant of a patent inherently involves public rights. The initial grant provides the patent holder a monopoly against the public, and an IPR proceeding, which assesses the validity of this grant, continues to involve a public right.
Given that the PTAB’s jurisdiction covers disputes involving public rights, the Federal Circuit ruled that the expiration of the patent does not affect the PTAB’s authority to conduct an IPR.
On the issue of patentability, the Federal Circuit sided with Apple, agreeing that the claims in Gesture’s patent were indeed unpatentable due to obviousness.
This ruling provides important clarity on the PTAB’s jurisdiction over expired patents, reinforcing the view that patent validity can be challenged even after a patent has expired, as the underlying public rights remain intact.
Note: This article is intended to serve as a general overview of the case and related legal concepts. For advice specific to your circumstances, it is recommended to consult with a legal professional.