by Dennis Crouch
The Supreme Court is being asked to decide whether the PTAB can invalidate expired patents through inter partes review, in a case that could limit the reach of the landmark Oil States decision that found IPRs constitutionally permissive. In Apple Inc. v. Gesture Technology Partners, the Federal Circuit ruled that PTAB retains jurisdiction over expired patents, but the patentee argues in its petition that once patents expire, they become purely private property rights that require traditional court adjudication rather than administrative review. Certiorari petition – Gesture v. Apple.
In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U.S. 325 (2018), the Supreme Court upheld the constitutionality of inter partes review (IPR) proceedings under Article III and the Seventh Amendment. Older property rights cases had barred administrative action to eliminate private property rights. But Oil States distinguished those cases — holding that the patent is “the grant of a public franchise” – a government-conferred right to exclude others for a limited time. Because a patent “did not exist at common law” but is a creature of statute, Congress may condition or qualify that grant, including by providing for administrative reconsideration of the patent’s validity.
Under this framework, Oil States placed patent validity determinations within the Court’s public-rights doctrine, which permits adjudication in non-Article III forums for matters “closely integrated into a public regulatory scheme” involving the government. The Court explained that IPR “does not make any binding determination regarding ‘the liability of [one individual] to [another] under the law’” – instead, it remains a matter between the patent owner and the government (acting to correct its own grant). Because of this public-rights framing, the Court found no Article III violation in assigning patent reconsideration to the PTAB. Likewise, the Seventh Amendment jury right was not triggered: the IPR was not a “Suit at common law” between private parties, but an administrative proceeding reviewing a public franchise grant. Oil States ultimately likened IPR to a specialized extension of the patent examination process.
Notably, Oil States emphasized the narrowness of its holding. The Court explicitly reserved judgment on “whether other patent matters, such as infringement actions, can be heard in a non-Article III forum.” But, Oil States does not discuss the extent its reasoning would apply once a patent’s term had ended.
In Apple Inc. v. Gesture Technology Partners, LLC, 127 F.4th 364 (Fed. Cir. 2025), the Federal Circuit addressed this expiration issue – holding that the PTAB’s IPR review power does extend to patents that are no longer in force. The case involved U.S. Patent No. 8,878,949, which had expired in 2020, after which the patentee sued several companies for past infringement. In response to those lawsuits, the accused infringers petitioned for inter partes review which ultimately leading to PTAB decisions invalidating most claims.
In its decision, The Federal Circuit rejected Gesture’s constitutional challenge and upheld the PTAB’s jurisdiction. While acknowledging it had not “squarely addressed” this issue before, the court noted that it had implicitly assumed the PTO’s authority in past cases involving expired patents. More importantly, the panel reasoned that Oil States’ logic does not hinge on the patent’s unexpired status. In the panel’s view, an IPR is fundamentally an adjudication of the patent’s grant – a public-rights issue – and “the review of an earlier grant of a patent inherently involves the adjudication of a public right”. Thus, even if the patent has expired, the PTO’s authority to reconsider that grant remains intact. Although a patentee’s exclusive rights end at expiration, the patent grant does not become a legal nullity – it carries residual effects, such as the patentee’s ability to seek damages for past infringement for six more years.
Gesture’s petition argues that Oil States offers a narrow limitation on private property rights that is grounded in the ongoing nature of the patent monopoly. Once a patent expires, this “public franchise” terminates entirely, and what remains are purely private property rights. See Brown v. Duchesne, 60 U.S. (19 How.) 183 (1857) (“the rights of a party under a patent are his private property.”). Although an expired patent does still permit back-damages, there is no longer any prospective exclusive right. Oil States decision that patents are a public right was grounded in the notion that government needs to police against overbroad patent claims that may limit public participation. That decision case, particularly noted that the purpose of IPRs – as an extension of patent examination – is to protect the public and not to resolve a particular dispute between private parties. But, that justification does not apply to expired patents because the public is already free to use the invention. The only remaining purpose of the patent is to resolve private disputes between patent holders and alleged infringers over monetary liability for past infringement. This shifts the proceedings from the government policing patent monopolies (a public concern) to adjudicating private tort-like claims for damages.
One interesting case involving post-expiry rights is Root v. Lake Shore & M.S. Ry. Co., 105 U.S. 189 (1881). After his railroad car brakes patent expired, the patent holder filed a bill in equity seeking an accounting of the profits that a railroad company had gained through infringement during the patent’s active term. The Court affirmed the dismissal of the bill, holding that when sitting in equity, the courts lack jurisdiction over “naked” claims for profits and damages against patent infringers when no ongoing equitable relief is sought. The opinion explains that equitable jurisdiction in patent cases is primarily justified by the need for injunctive relief to prevent continued infringement, and that once a patent expires, “the most general ground for equitable interposition”—stopping ongoing violations—disappears entirely. After expiration, patent holders must pursue their claims for past infringement damages in courts of law with jury trials, as this provides “a plain, adequate, and complete remedy” for what are essentially legal rights to monetary compensation. See also, Smith v. The London & South-Western Ry. Co. (1854) 69 Eng. Rep. 173 (English court cited as the source of the rule). Although this case is not directly about administrative powers, it highlights the same issues raised by Gesture – that expired patent raise radically different public policy concerns than patents still in force.
Relitigating Oil States?: In reading the brief, I find some amount of tension with Oil States itself. While Gesture formally accepts Oil States as binding precedent, the arguments at times appear designed to relitigate that decision’s core holding rather than merely seek clarification of its scope. The petition’s emphasis on patents as “private property rights that historically have been adjudicated in the courts of law” and its extensive discussion of nineteenth-century cases treating patent disputes as common law matters echo the same arguments that failed to persuade the Oil States majority. This is a dangerous approach because it can allow the court to simply reject the petition as attempting to relitigate stare decisis. But, there are compelling strategic reasons why this approach, despite its risks, may be well-calculated. First, it highlights that Oil States pushed against the long history of patents and was very much an edge case in deciding that the public rights issue overwhelmed the private adjudication tradition.
Second, the approach may also reflect dramatically changed composition of the Supreme Court since 2018. Three justices from the Oil States majority have departed, including Justice Breyer, who consistently championed limiting patent rights and viewed administrative patent review as beneficial innovation policy. The current Court, with Justices Kavanaugh, Barrett, and Jackson replacing Justices Kennedy, Ginsburg, and Breyer respectively, presents a potentially more receptive audience for constitutional property rights arguments. Given that the conservative majority has shown increased skepticism toward expansive administrative power in other contexts, Gesture may be calculating that the current justices would be more willing to cabin Oil States when presented with a factually distinct case.
Gesture brought in Supreme Court specialist David Frederick of Kellogg, Hansen, Todd, Figel & Frederick who filed the brief for the patentee. Responsive Briefs are due in mid July 2025. Here, the respondents include Apple, LG, Google, and the USPTO.
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The patent at issue in this case is US8878949B2, which claims claims a portable device that uses gesture recognition to automatically trigger image capture. The claims require an optical sensor with a processing unit that detects gestures in the sensor’s field of view and controls the camera to store images in response to gesture commands. The PTAB found claims most claims would have been obvious at the time of the invention. On appeal, the Federal Circuit went further — adding more claims to the obvious tally.