PTAB Jurisdiction Over Expired Patents Affirmed

In the recent decision of Apple Inc. v. Gesture Technology Partners, LLC, the Federal Circuit addressed a critical issue regarding the jurisdiction of the Patent Trial and Appeal Board (PTAB) over expired patents brought before them in inter partes review (IPR) proceedings. The Court upheld the PTAB's jurisdiction, rejecting Gesture Technology Partners' argument that the expiration of a patent precludes IPR jurisdiction. This ruling reinforces the PTAB's authority and clarifies how expired patents are treated in post-grant proceedings.

Gesture Technology Partners, LLC owns U.S. Patent No. 8,878,949 ('949 patent) covering image capture technology. This technology utilizes electro-optical sensors to detect gestures and control digital cameras for capturing images. In 2021, Apple filed an IPR challenging the validity of the '949 patent based on prior art. It is important to note that the patent expired in 2020, which has raised questions regarding the jurisdiction of the Patent Trial and Appeal Board (PTAB).

The PTAB concluded that most claims of the '949 patent were unpatentable due to obviousness, except for claim 4. Gesture Technology Partners contested the PTAB's jurisdiction, arguing that once a patent expires, the "public franchise" no longer exists, and jurisdiction over the patent returns to Article III courts.

The Federal Circuit rejected Gesture's argument, affirming that the PTAB retains jurisdiction over expired patents. In its decision, the Court reiterated that patents are public franchises, as established in Oil States Energy Services v. Greene's Energy Group (2018). The issuance of a patent involves public rights, and Inter Partes Reviews (IPRs) serve as a mechanism for the public to challenge improperly granted patents. This public interest persists even after a patent expires, as expired patents can still confer rights, such as the ability to recover damages for past infringement.

The Court also emphasized that IPRs serve as a "second look" at patent grants. This review process ensures that patent monopolies remain within their legitimate scope. The Court noted that previous cases, such as Immunex Corp. v. Sanofi-Aventis and Axonics, Inc. v. Medtronic, Inc., have implicitly affirmed the jurisdiction of the Patent Trial and Appeal Board (PTAB) over expired patents, as these reviews impact ongoing disputes regarding past infringement and validity.

Lastly, the Court clarified that the expiration of a patent does not erase all associated rights. For example, patentees can still seek damages for past infringements. As a result, disputes regarding the validity of expired patents have practical implications and fall under the jurisdiction of the PTAB.

This ruling has significant implications for both patent holders and challengers. Patent challengers can initiate Inter Partes Reviews (IPRs) against expired patents, ensuring invalid patents do not unduly restrict competition or impose unwarranted licensing obligations. Patent owners cannot shield their patents from review by the Patent Trial and Appeal Board (PTAB) simply by allowing them to expire. The PTAB's authority extends to all patents, regardless of their expiration status, as long as the rights associated with the patent remain enforceable.