PTAB invalidation of gesture technology patent claims affirmed by CAFC
PTAB invalidation of gesture technology patent claims affirmed by CAFC
After the PTAB upheld an examiner’s decision in an ex-parte re-examination that rejected claims 11 and 13 of Gesture’s US patent number 7,933,431, the case reached the Federal Circuit.
The U.S. Court of Appeals for the Federal Circuit (CAFC) has issued a precedential decision in In Re: Gesture Technology Partners, LLC, partially confirming and partially dismissing an appeal from the Patent Trial and Appeal Board (PTAB). The PTAB’s invalidation of two claims of Gesture’s patent on motion-sensing tech is confirmed by the decision which also asserts the Board’s authority to rule on expired patents. Circuit Judge Lourie authored the opinion, joined by Circuit Judges Bryson and Chen.
After the PTAB upheld an examiner’s decision in an ex-parte re-examination that rejected claims 11 and 13 of Gesture’s US patent number 7,933,431, the case reached the Federal Ciruit. The examination was requested by Samsung Electronics Co., two inter partes review (IPR) proceedings concerning the ‘431 patent also concluded while this ex-parte re-examination was pending. Initiated by Apple Inc. and by Unified Patents LLC, the IPRs resulted in the invalidation of several other claims of the ‘431 patent.
The ‘431 patent relates to a method for using a camera to sense the motion of objects for input in applications such as handheld devices and video games. The Patent Office erred in determining that the estoppel provision of 35 U.S.C. § 315(e)(1) does not apply to pending ex-parte re-examination proceedings, and that the Board incorrectly found that Liebermann anticipated claims 11 and 13 of the ‘431 patent; Gesture argued.
Regarding estoppel, the Federal Circuit agreed with the PTAB that the estoppel provision of 35 U.S.C. § 315(e)(1) did not require the end of the ex-parte re-examination. As Samsung was a member of Unified Patents, it was estopped from ‘maintaining’ a proceeding at the Patent Office which it could have raised in the IPR; Gesture argued.
This was rejected by the court which clarified that while a third party ‘requests’ a re-examination, the Patent Office ‘maintains’ it. “The petitioner does not maintain the proceeding. Rather, the Patent Office does,” the opinion reportedly said.
The Board’s finding that claims 11 and 13 were expected by a prior art patent, Liebermann, was also affirmed by the court. Liebermann did not disclose a means for correlating position information with a device function, Gesture argued. Substantial proof supporting the Board’s conclusion that Liebermann’s process of transforming an image into unique identifiers for transmission met the ‘correlation’ limitation, the court however found.
The argument by Gesture that the PTAB lacked jurisdiction because the ‘431 patent had expired was rejected by CAFC. Reaffirming its standard, the court noted that earlier in the year, it had confirmed its jurisdiction over expired patents in a precedential decision, and consistently applied this reasoning, including in other cases involving Gesture. A patent owner’s right to sue for past damages after expiration of a patent creates a live controversy, which gives the PTAB authority to adjudicate validity; the court explained. Recently, the Supreme Court refused to review this issue, leaving the Federal Circuit’s precedent intact.
Finally, the Federal Circuit affirmed the PTAB’s decision on claims 11 and 13, and rejected the appeal for the remaining claims that had been invalidated in separate IPR proceedings.
