IP News

Gesture Technology Partners, LLC (Gesture) is the owner of U.S. Patent No. 8,878,949 (the ’949 patent), entitled “Camera Based Interaction and Instruction.” Id. at 2-3. In June 2021, Apple Inc. (Apple) filed an inter partes review (IPR) petition, asserting that each claim of the ’949 patent was unpatentable as obvious over two prior art references. Id. at 4. However, at the time of the IPR, the ’949 patent had already expired. Id. Gesture argued that the Board “could not exercise jurisdiction” over the IPR because “the ’949 patent expired in May 2020, before Apple filed its petition in June 2021.” Id. at 5. Gesture argued that “[s]ince the patentee’s right becomes limited to collecting damages … in an Article III court” upon expiration of a patent, “jurisdiction over the expired patent” is also limited to the Article III courts at that time. Id. at 5.

The Federal Circuit noted that although they “have not squarely addressed whether the Board may institute IPRs for patents after they have expired,” the Court has “implicitly assum[ed] that the Board has jurisdiction is such cases.” Id. Here, the Federal Circuit confirmed that “the Board has jurisdiction over IPRs concerning expired patents.” Id.