Expired Patents Can Be Challenged

• Published date: 29 December 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Jones Day
• Author: Sarah A. Geers and Amanda Simms

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...