By Amanda Simms* and Sarah Geers

Although it may seem counterintuitive, the PTAB has jurisdiction over expired patents, and patent owners may need to defend their expired patents in inter partes review.  The PTAB recently reiterated this in Apple, Inc. v. Gesture Tech. Partners, LLC, where it instituted IPR over the patent owner’s objections to jurisdiction.  IPR2021-00922, Paper 10 (Nov. 29, 2021).

In Apple, the petitioner sought inter partes review to challenge thirty of the patent owner’s claims in an expired patent involving a method for determining a gesture using a camera and light source.  Among other arguments, the patent owner argued that the PTAB does not have jurisdiction over expired patents because 35 U.S.C. § 316(a)(9) requires the Director to impose regulations “setting forth standards and procedures for allowing the patent owner to move to amend the patent,” and expired patents cannot be amended.  Because the patent-in-suit had expired and could no longer be amended, the patent owner asserted that the PTAB lacked jurisdiction to institute IPR and that any decisions about the patent’s validity should be made by an Article III court.

The PTAB disagreed for three reasons.  First, the PTAB noted that the Supreme Court has stated that inter partes review functions as “a second look at an earlier administrative grant of a patent.”  Second, PTAB rules make clear that inter partes review covers expired patents because 37 C.F.R. 42.100(b) dictates that the PTAB use the same claim construction standard in an IPR that would be used in a civil action, a standard that is “consistent with the same standard that the Office has applied in interpreting claims of expired patents and soon-to-be expired patents.”  See 83 Fed. Reg. 51341 (Oct. 11, 2018) (citing Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017).  Finally, several statutes that govern IPR—such as the statutes establishing the scope of IPR and limitations on filing—make no mention of a patent’s expiration date being relevant and do not expressly limit IPR to non-expired patents, despite imposing other limitations.  See 35 U.S.C. § 311(b),(c); 35 U.S.C. § 315.


The PTAB concluded that it indeed has jurisdiction over expired patents and instituted IPR of the challenged claims.  Patent owners should therefore be prepared to defend their expired patents on the merits in an IPR proceeding.

* Amanda is a member of the New Lawyer’s Group in Jones Day’s New York Office.

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Sarah Geers represents pharmaceutical clients in intellectual property litigation in a variety of venues, including in district court, arbitration, and at the Patent Trial and Appeal Board (PTAB). Her practice spans Hatch-Waxman and other patent infringement actions, inter partes review proceedings, trade secret, and misappropriation actions. Her litigation experience spans discovery, trial, and appeal.