Clearing the Air: Federal Circuit Confirms PTAB Has Jurisdiction Over IPRs Concerning Expired Patents

Holding

In Apple v. Gesture Technology, the Federal Circuit (“Court”) confirmed that the Patent Trial and Appeal Board (“Board”) has jurisdiction over IPRs concerning expired patents.^[1] The Court also found claims 1-7 unpatentable, reversing the Board’s determination that claim 4 was not unpatentable.^[2]

Background

In June 2021, Apple Inc. (“Apple”) filed a petition for inter partes review (“IPR”) challenging various claims of expired U.S. Patent No. 8,878,949 (the “’949 patent”) as being obvious over U.S. Patent No. 6,144,366 (“Numazaki”) and Japanese Patent Application No. H4-73631 (“Nonaka”).^[3] The Board determined that claims 1-3, 5-10, and 12-17 of the ’949 patent were unpatentable.^[4] Apple appealed the Board’s findings as to claims 4, 11, and 18. Gesture Technology Partners, LLC (“Gesture”) cross-appealed the Board’s unpatentability findings as to claims 1-3, 5-10, and 12-17 and further challenged the Board’s jurisdiction over the IPR based on the ’949 patent having been expired for over a year before the petition for IPR was filed.^[5]

Analysis

In its cross-appeal, Gesture relied on the Supreme Court’s Oil States^[6] decision to argue that the Board did not have jurisdiction over the IPR because the ’949 patent expired before Apple filed its petition, and thus only Article III courts had jurisdiction to address the validity of the expired patent.^[7] The Federal Circuit disagreed, first noting that its previous reviews of IPR decisions involving expired patents “implicitly assume[d] that the Board had jurisdiction in such cases.”^[8] The Court further rejected Gesture’s argument that the “public franchise ceases to exist” after a patent expires, explaining that it was “incompatible with the Court’s logic in Oil States” that an IPR falls under the public rights doctrine because the procedure involves a “second look” at an earlier decision granting a public right.^[9] The Court, therefore, concluded that the review of an earlier grant of a patent “inherently involves the adjudication of a public right,” noting that “it is irrelevant whether the patent has expired” because even expired patents confer a limited set of rights to the patentee that “create[] a live case or controversy, which can be adjudicated by an IPR and in proceedings…on appeal.”^[10]

Takeaways

This case confirms two principles: (1) patentees have a right to assert expired patents against defendants, and (2) petitioners have a right to challenge expired patents to dispel or forestall any existing or future allegations of infringement during the life of that patent.

Endnotes

[1] Apple Inc. v. Gesture Tech. Partners, LLC, 127 F.4th 364, 367 (Fed. Cir. 2025).

[2] Id. at 366-367.

[3] Id. at 367.

[4] Id.  

[5] This decision is limited to claims 1-7. The Court separately affirmed the Board’s decision finding claim 8-18 unpatentable in In re Gesture Tech. Partners, LLC, No. 24-1038, slip op. at 2 (Fed. Cir. 2025).

[6] Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U.S. 325 (2018).

[7] Apple v. Gesture, 127 F.4th at 368.

[8] Id.  

[9] Id. at 369.  

[10] Id.