Supreme Court Declines to Hear Challenge to Patent Validity Reviews of Expired Patents
The U.S. Supreme Court has declined to review rulings that allow challenges to the validity of patents even after they have expired, a decision that leaves in place expanded authority for the Patent Trial and Appeal Board (PTAB). The denial of certiorari effectively upholds the federal Circuit’s interpretation of the “public rights doctrine” as applying to expired patents,despite arguments that such reviews become “quintessentially private disputes” once the right to exclude infringers is lost.
The case originated with petitions filed by Gesture Technology, a developer of motion sensing camera technology, challenging Federal Circuit decisions that affirmed agency invalidations of it’s patent claims – some of which had already expired. Gesture argued that allowing the PTAB to review the validity of expired patents represents an “extraordinary arrogation of administrative power” and contradicts centuries of established patent law.
PTAB Jurisdiction Confirmed for Expired Patents
Gesture’s primary challenge centered on a January ruling in Gesture I,where the Federal Circuit confirmed the PTAB’s jurisdiction over inter partes review (IPR) proceedings involving expired patents. The dispute arose from a petition filed by apple in June 2021, over a year after the relevant patent claims expired in May 2020. The CAFC rejected Gesture’s argument that expired patents fall outside the scope of the public rights exception to article III guarantees of jury trials, asserting that agency reviews of patent validity inherently involve adjudication of a public right granted by the U.S.Patent and Trademark Office.
According to Gesture, even after a patent expires, the claims still represent valuable property, allowing the owner to pursue legal remedies like damages for past infringement.The company contended that the end of the patent’s exclusive monopoly “ends the need for an administrative process to protect the public interest.”
Past Context and the ‘Oil States’ Decision
The dispute hinges on the interpretation of “public rights” as defined by Supreme Court precedent. The Court has recognized a category of cases involving rights granted by the federal government that are closely tied to regulatory schemes, allowing agency adjudication without a jury trial. However, patent cases have historically been adjudicated in courts of law, with equity courts handling only cases seeking injunctive relief, a practise rooted in English chancery rulings dating back to 1882.
The case draws heavily from the 2018 Oil States Energy Services v. Greene’s Energy Group decision, which upheld the constitutionality of IPR proceedings by finding that they involved public rights “between the government and others.” Oil States focused on the nature of patent rights as exclusive monopolies. Gesture argued that the Supreme Court’s ruling in Oil States did not adequately address the rights of patent owners against alleged infringers, specifically the right to monetary damages.
Expired Patents: Private Disputes with No Public Interest?
Gesture maintained that challenges to the validity of expired patents differ fundamentally from those involving active patents.”By contrast to patents in force, validity challenges over expired patents are ‘quintessentially private disputes’ creating outcomes in which the public has no interest,” the company contended. An IPR proceeding in such cases, Gesture argued, merely “absorbs and displaces the patent holder’s right to seek infringement damages in court” without any demonstrable benefit to competition.
The Supreme Court also declined to hear a related petition from Gesture concerning a separate Federal Circuit ruling from March. That decision upheld a PTAB ruling invalidating some of Gesture’s claims and dismissed arguments that Apple should have been barred from petitioning for IPRs based on prior challenges. Gesture had requested the Supreme Court hold the second petition pending a decision on Gesture I.
The Supreme Court’s decision not to intervene leaves the Federal Circuit’s expanded interpretation of the public rights doctrine intact, potentially opening the door to continued PTAB review of patent validity even after the patent’s expiration date.
