CAFC Affirms PTAB Invalidation of Gesture Technology Patent Claims, Rejects Estoppel and Expired Patent Arguments

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday issued a precedential decision in In Re: Gesture Technology Partners, LLC, affirming in part and dismissing in part an appeal from the Patent Trial and Appeal Board (PTAB). The decision affirmed the PTAB’s invalidation of two claims of Gesture’s patent on motion-sensing technology and confirmed the Board’s authority to rule on expired patents. The opinion was authored by Circuit Judge Lourie and joined by Circuit Judges Bryson and Chen.

The case reached the Federal Circuit after the PTAB affirmed an examiner’s decision in an ex parte reexamination that rejected claims 11 and 13 of Gesture’s U.S. Patent No. 7,933,431. Samsung Electronics Co. requested the examination; while this ex parte reexamination was pending, two inter partes review (IPR) proceedings concerning the ‘431 patent also concluded. The IPRs, initiated by Apple Inc. and by Unified Patents LLC, resulted in the invalidation of several other claims of the ‘431 patent.

The ‘431 patent relates to a method for using a camera to sense the motion of objects for input in applications such as handheld devices and video games. Gesture argued that the Patent Office erred in determining that the estoppel provision of 35 U.S.C. § 315(e)(1) does not apply to pending ex parte reexamination proceedings and that the Board incorrectly found that Liebermann anticipated claims 11 and 13 of the ‘431 patent.

On the issue of estoppel, the Federal Circuit agreed with the PTAB that the estoppel provision of 35 U.S.C. § 315(e)(1) did not require the termination of the ex parte reexamination. Gesture argued that because Samsung was a member of Unified Patents, it was estopped from “maintaining” a proceeding at the Patent Office that it could have raised in the IPR. The court rejected this, clarifying that while a third party “requests” a reexamination, it is the Patent Office that “maintains” it. The opinion said, “the petitioner does not maintain the proceeding. Rather, the Patent Office does.”

The court also affirmed the Board’s finding that claims 11 and 13 were anticipated by a prior art patent, Liebermann. Gesture contended that Liebermann did not disclose a means for “correlating” position information with a device function. The court, however, found substantial evidence supporting the Board’s conclusion that Liebermann’s process of transforming an image into unique identifiers for transmission met the “correlation” limitation.

Regarding jurisdiction, the CAFC rejected Gesture’s argument that the PTAB lacked jurisdiction because the ‘431 patent had expired. The court reaffirmed its precedent, noting it had previously confirmed its jurisdiction over expired patents in a precedential decision earlier in the year and has consistently applied this reasoning, including in other cases involving Gesture. The court explained that a patent owner’s right to sue for past damages after expiration of a patent creates a live controversy, which gives the PTAB authority to adjudicate validity. The Supreme Court recently declined to review this issue, leaving the Federal Circuit’s precedent intact.

Ultimately, the Federal Circuit affirmed the PTAB’s decision on claims 11 and 13 and dismissed the appeal for the remaining claims that had been invalidated in the separate IPR proceedings.

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