On January 27, 2025, the Federal Circuit held that the Patent Trial and Appeal Board (“PTAB”) “has jurisdiction over IPRs concerning expired patents.” See Apple Inc. v. Gesture Tech. Partners, LLC, 2025 WL 299939, *2 (Fed. Cir. Jan. 27, 2025).
Background and Procedural History
Apple, the inter partes review (“IPR”) petitioner, filed an IPR petition in June 2021. See id. at *1. The patent at issue was U.S. Patent No. 8,878,949 (“the ’949 patent”), related to image capture technology and owned by Gesture. See id. Apple asserted that all claims of the ’949 patent were obvious over the prior art. See id. The PTAB held that several claims of the ’949 patent were unpatentable and that others were not shown to be unpatentable. See id. Both parties appealed the PTAB’s decision to the Federal Circuit. On appeal, the Federal Circuit addressed arguments directed towards both jurisdiction and obviousness. This blog discusses only the jurisdictional portion of the court’s analysis.
Patent Owner Argues PTAB Lacks Jurisdiction over Expired Patents
At the Federal Circuit, Gesture argued “that the [PTAB] could not exercise jurisdiction over this IPR because the ’949 patent expired in May 2020, before Apple filed its petition in June 2021.” See id. at *2. Gesture relied on Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U.S. 325 (2018), stating that “jurisdiction over the expired patent becomes limited to the Article III courts” because patent owners lose their exclusionary rights when a patent expires. See id. Rather, the patent owner’s rights “become[ ] limited to collecting damages that formerly existed through an infringement action in an Article III court[.]” See id. Therefore, Gesture reasoned that the PTAB did not have jurisdiction over the ’949 patent.
Federal Circuit’s Holding
Acknowledging that the Federal Circuit has not “squarely addressed whether the [PTAB] may institute IPRs for patents after they have expired[,]” the court stated affirmatively that “the [PTAB] has jurisdiction over IPRs concerning expired patents.” See id. To support its holding, the Federal Circuit relied on Oil States and the public-rights doctrine. See id. at *3. The Federal Circuit also noted that this is not the first case it has reviewed involving expired patents in an IPR decision, which implicitly shows that the PTAB has jurisdiction over expired patents. See id.
Despite its reliance on the same case, the Federal Circuit rejected Gesture’s argument. The Court summarized the Oil States holding, stating that “IPRs fall within the public-rights doctrine and do not violate Article III.” See id. (citing Oil States Energy Services, 584 U.S. at 337). The Court further emphasized the fact that although an expired patent limits a patent owner’s rights, it does not eliminate their rights. See id. For example, a patent owner of an expired patent can sue for past damages. See id. (citing Genetics Inst., LLC v. Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011). In that light, the Federal Circuit reasoned that “Gesture fail[ed] to explain why an IPR, which ‘would have a consequence on any infringement that occurred during the life,’ of the patent, falls outside the scope of the public-rights doctrine solely because the patentee’s prospective right to exclude others has terminated.” See id. (internal citations omitted) (citing Sony Corp. v. Iancu, 924 F.3d 1235, 1238 n.1 (Fed. Cir. 2019).
Conclusion & Takeaway
With the Federal Circuit’s confirmation that the PTAB has jurisdiction to conduct IPR proceedings over patents, PTAB practitioners can now proceed with confidence when challenging an expired patent. Apple, Inc. v. Gesture Tech. Partners makes it clear that the PTAB has jurisdiction over IPR proceedings involving expired patents.