Ex Parte Reexaminations Are Maintained by the PTO, Not the Petitioner

Written by: Jacob R. Rosenbaum and Michael E. Salamy

IN RE: GESTURE TECHNOLOGY PARTNERS, LLC

Before Lourie, Bryson, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: The estoppel provision of 35 U.S.C. § 315(e)(1) does not apply to ongoing ex parte reexaminations because the petitioner does not “maintain” the proceeding, the Patent Office does.

Samsung Electronics (“Samsung”) requested ex parte reexamination of Gesture Technology Partners’ (“Gesture’s”) patent while two IPRs were also pending, one of which Samsung was a party to. The IPRs resulted in final written decisions invalidating all but two claims of Gesture’s patent. Gesture then petitioned to terminate the ex parte reexamination, arguing that Samsung, as a party to one of the IPRs, was estopped from maintaining the reexamination under the estoppel provision of 35 U.S.C. § 315(e)(1). The Patent Office denied the petition, concluding that the estoppel provision of § 315(e)(1) does not apply to ongoing ex parte reexaminations.

The Federal Circuit affirmed. The Federal Circuit explained that 35 U.S.C. § 315(e)(1) prohibits IPR petitioners from requesting or maintaining proceedings on any ground that the petitioner raised or reasonably could have raised during the IPR after the IPR decision issues. Because the Patent Office maintains the proceeding, and not the petitioner, the estoppel provision is inapplicable against the Patent Office for ongoing ex parte reexamination proceedings.

Editor: Sean Murray