Federal Circuit IP
Apple Inc. v. Gesture Tech. Partners, LLC
CAFC Nos. 2023-1501, 2023-1554, Decided Jan. 27, 2025
(Lourie, Dyk, Hughes)
Overview: The PTAB has authority to review the grant of a patent, regardless of whether the patent has expired.
Background
- Gesture owns the ’949 patent, which expired in May 2020.
- Apple filed a petition for IPR of the ’949 patent in June 2021.
- The Board found all claims unpatentable aside from one dependent claim.
- Apple appealed the determination as to the surviving dependent claim.
- Gesture cross-appealed, arguing that the Board did not have jurisdiction over the ’949 patent because it expired before Apple filed its petition, and the only rights left for expired patents are to damages available through infringement actions in Article III courts.
Issue: Whether the Board has jurisdiction over expired patents in IPR.
Holding: The Board has jurisdiction over expired patents in IPR. Affirmed in part and reversed in part as to the Board’s unpatentability determinations, such that claims 1-7 of the ’949 patent are unpatentable.
Federal Circuit Analysis
- Federal Circuit implicitly assumed the Board’s jurisdiction over expired patents by reviewing Board decisions involving expired patents.
- In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U.S. 325 (2018), the Supreme Court held that the Board’s authority over IPRs does not violate Article III under the public-rights doctrine.
- Under public-rights doctrine, Congress may assign matters to non-Article III forums where those matters arise between the government and others; patents involve public rights because they take rights from the public and give them to the patentee.
- Expired patents still involve public rights because the patentee maintains the right to bring an action for past damages.
Takeaway
- The Board has jurisdiction over patents in IPRs, regardless of their status.