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ARTICLE · 29 DECEMBER 2021

Expired Patents Can Be Challenged

Jones Day
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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.

United StatesIntellectual Property
Sarah A. Geers
Sarah A. Geers
Amanda Simms
Amanda Simms
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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

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