In re Gesture Tech. Partners, LLC

Authored by: Jeremy J. Gustrowsky

A recent decision has clarified how patent challenges can proceed even after multiple rounds of review and the expiration of the patent itself. Gesture Technology Partners, LLC found itself in a complex situation involving its U.S. Patent No. 7,933,431, which covers technology for using cameras to sense gestures for devices like phones and video game controllers. After Samsung requested an ex parte reexamination of this patent, two separate inter partes reviews (IPRs) were also launched by other parties, including Unified Patents LLC and Apple Inc., all aiming to invalidate various claims of the patent.

As the dust settled, most of the patent’s claims were found unpatentable in the IPRs, with only claims 11 and 13 left standing. Gesture argued that the Patent Office should have stopped the ongoing ex parte reexamination because, under the law, a party who loses an IPR cannot keep challenging the same patent in other Patent Office proceedings. However, the court disagreed, explaining that while a party can request a reexamination, it is the Patent Office that actually maintains and controls the process—not the original requester. Therefore, the legal estoppel provision did not apply, and the reexamination could continue.

Gesture also challenged the Patent Office’s finding that the remaining claims were not new, arguing that the prior art (U.S. Patent 5,982,853 to Liebermann) did not disclose all the necessary features. The court reviewed the evidence and agreed with the Patent Office that Liebermann did, in fact, anticipate the claims. Specifically, the court found that Liebermann’s system for digitizing and transmitting sign language gestures met the requirements of the challenged claims.

Another key issue was whether the Patent Office even had the authority to review an expired patent. Gesture argued that once a patent expires, there’s nothing left to challenge. The court rejected this, noting that patent owners can still sue for damages for infringement that happened before expiration, so there is still a real dispute to resolve. This means the Patent Office can finish reexaminations even after a patent has expired.

In summary, this decision confirms that ex parte reexaminations can continue even after IPRs have concluded and even if the patent has expired, as long as there are still legal rights at stake. For patent owners and challengers alike, it’s a reminder that the process of reviewing patent validity can be lengthy and multi-layered, with different rules applying at each stage – even beyond expiration.