Federal Circuit IP
In re Gesture Technology Partners, LLC
In re Gesture Technology Partners, LLC
CAFC 2025-1075, decided Dec. 1, 2025
(Lourie, Bryson, and Chen)
Issues: Whether IPR estoppel applies to ongoing ex parte reexaminations (EPRs) and requires their termination; whether the Board has jurisdiction over expired patents in EPR.
Overview: IPR estoppel does not prevent the Patent Office from maintaining EPRs requested by IPR petitioner, and the Board retains jurisdiction over expired patents.
Background
- Samsung requested EPR of Gesture’s ’431 patent relating to gesture-based computer sensing technology, which the Patent Office granted.
- Two IPRs simultaneously pending: Unified Patents LLC (Samsung member) invalidated claims 7-9, 12; Apple invalidated claims 1-10, 12, 14-31.
- After final written decision in the Unified Patents IPR, Gesture petitioned to terminate the pending EPR, arguing Samsung was estopped under 35 U.S.C. § 315(e)(1) from maintaining a proceeding at the Patent Office challenging the patent on grounds it could have raised in the IPR. The Patent Office denied this petition.
- In the EPR, the examiner rejected claims 11 and 13 as anticipated by prior art. The Board affirmed this rejection.
- Prior to this appeal’s resolution, the Federal Circuit affirmed the IPR decisions invalidating all claims except claims 11 and 13.
Holdings: Affirmed Board’s decision as to claims 11 and 13. Dismissed Gesture’s appeal as to claims 1-10, 12, and 14-30 based on prior IPR affirmances.
Federal Circuit Analysis
- A petitioner may request reexamination under § 302 and file an optional reply under § 304, but the Patent Office maintains the proceeding, not the petitioner.
- The reexamination statute does not provide for requester involvement after the optional reply.
- The Board properly denied Gesture’s termination petition.
- The Board has jurisdiction over EPRs regarding expired patents because patentee maintains some rights after expiration, such as past damages.
Takeaways
- IPR petitioners can request EPRs, which may be maintained by Office even after IPR concludes.
- Expired patents subject to review in EPR.
