By Erin Bies, David Linden, and Dave Maiorana –
On appeal from an ex parte reexamination (“EPR”) decision, the Federal Circuit held that a final written decision of an inter partes review (“IPR”) does not preclude the Patent Office from maintaining an ongoing EPR. Specifically, the Federal Circuit held that the IPR estoppel provision of 35 U.S.C. § 315(e)(1) is inapplicable to proceedings that are not maintained by the petitioner of an IPR, such as an EPR.
U.S. Patent No. 7,933,431 (“the ’431 Patent”), assigned to Gesture Technology Partners, LLC (“Gesture”), is directed to enabling devices such as handheld computers, cars, and video games to detect and interpret the position or movement of objects via a camera and computer. In November 2021, Samsung Electronics Co. (“Samsung”) filed a request for an EPR of the ’431 Patent, which was subsequently granted in January 2022. Unified Patents LLC (“Unified”), of which Samsung is a member, had previously initiated one of two pending IPRs of the ’431 Patent. In November 2022, the PTAB issued a final written decision in each IPR, invalidating all but dependent claims 11 and 13. Each IPR decision was affirmed by the Federal Circuit. In September 2024, after the issuance of the IPR decisions, the Patent Office issued its decision in the Samsung EPR. All claims—including claims 11 and 13—were found to be invalid as anticipated.
On appeal of the EPR, Gesture argued 1) that Samsung, as a member of Unified, should have been statutorily estopped from challenging in an EPR the same patent claims previously challenged by Unified in an IPR; 2) that the PTAB’s affirmation of the examiner’s determination finding that claims 11 and 13 were anticipated was not supported by substantial evidence; and 3) that the PTAB had no jurisdiction to invalidate the ’431 Patent since it had already expired.
Under 35 U.S.C. § 315(e)(1), IPR petitioners are estopped from being able to “request or maintain a proceeding before the [Patent] Office” regarding any claim that “the petitioner raised or reasonably could have raised” during an IPR after a final written decision has issued. In other words, in some instances an IPR petitioner is precluded from getting multiple bites at the apple regarding the same claims. Gesture maintained that the ongoing EPR should have been terminated because the final written IPR decision estops further challenges to the claims in the form of an EPR, which is a “proceeding before the Office,” and thus within the province of § 315(e)(1). The Federal Circuit disagreed. Reviewing the statutory construction de novo, the Federal Circuit found that a petitioner in an IPR does not “maintain the proceeding;” instead, the Patent Office does. The reexamination petitioner initiates the proceeding, but their role does not necessarily extend further. Therefore, the § 315(e)(1) estoppel provision does not apply to EPRs.
Regarding the Patent Office’s finding of anticipation for claims 11 and 13 of the ’431 Patent, Gesture argued that the cited prior art reference did not “correlate” the content of an image with a method of sending that information, but instead disclosed a fixed process without the required correlation. The Federal Circuit found that substantial evidence supported the PTAB’s conclusion of anticipation because in the prior art reference, images were still reduced to unique data and then sent digitally—showing a relationship or “correlation.” Moreover, the Federal Circuit rejected Gesture’s argument that the PTAB lacked jurisdiction to invalidate the ’431 Patent because it was expired. The Federal Circuit explained that just as it had previously found for IPRs, a live case or controversy exists for expired patents when there is a question of past patent damages. As the Federal Circuit noted, “Gesture offer[ed] no argument” why a reexamination should be different.
Takeaway: IPR estoppel under § 315(e)(1) may be inapplicable to ongoing EPRs. Parties should consider initiating and defending post-grant proceedings strategically to ensure their arguments are considered on the merits.
David Maiorana
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