PTAB Retains Jurisdiction Of Expired Patents

by | Mar 7, 2025 | PTAB News, PTAB Trial Basics, Standing

By Ellen Geyer and Matt Johnson –

The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that the PTAB’s authority is not tied to the patent’s status.

The case arose after Gesture was granted a patent for its image capture technology, which triggers a digital camera to capture an image when a particular motion – a gesture – is detected in the visual field. Apple challenged that grant, petitioning the PTAB for IPR on the grounds that the invention was obvious. The PTAB agreed in part, determining that some of Gesture’s claims were indeed unpatentable.

The parties cross-appealed to the Federal Circuit, with Gesture opposing the findings of unpatentability and Apple, the opposite. Gesture also argued that because the patent at issue was expired, only Article III courts, not the PTAB, had jurisdiction to conduct the review.

The Federal Circuit rejected Gesture’s jurisdictional challenge. It explained that even though an expired patent confers fewer rights than an active one, it still creates a protectable interest. Leaning on Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the court explained that the initial grant of a patent inherently involves public rights because it gives the holder a monopoly against the public. 584 U.S. 325 (2018). An IPR assesses the validity of this grant, meaning it too involves a public right. Given that the PTAB has the authority to adjudicate matters involving public rights, expiration has no bearing on its jurisdiction.

Regarding patentability, the Court sided with Apple on all claims.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.