In a precedential opinion affirming the Patent Trial and Appeal Board ("the Board"), the Federal Circuit confirms that an inter partes review (IPR) may be filed even after the patent term has expired.  In affirming the Board's decision, the Federal Circuit asserts that because an IPR is "a second look at an earlier administrative grant of a patent," it involves the public's same "interest in seeing that patent monopolies are kept within their legitimate scope."  Thus, Gesture Technology's argument that the "public franchise ceases to exist" after a patent expires is incompatible with Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 584 U.S. 325 (2018).

Additionally, the Federal Circuit affirmed the unpatentability of claims 1-3 and 5-7 of US Patent No. 8,878,949.  The Federal Circuit stated that Gesture Technology’s expert provided no explanation for why an electro-optical sensor cannot comprise two units with distinct timing requirements. The Board was accordingly not required to accept this conclusory assertion. The Federal Circuit found no error in the Board’s weighing the plain import of Numazaki’s disclosure over Gesture Technology's expert’s cryptic, unsupported statement to the contrary.  Thus, the Federal Circuit affirmed the finding of unpatentability for claims 1-3 and 5-7.

Finally, the Federal Circuit reversed the Board's determination that claim 4 was not unpatentable.  Apple's expert, In his supplemental declaration, elaborated that the fact that the two components require overlapping fields of view was “key” to his conclusion that a person of ordinary skill in the art would find fixing them in relation to one another to be desirable.  In its final written decision with respect to claim 4, the Board ignored Apple’s expert’s testimony, reasoning that Apple’s IPR petition “[did] not reference any such analysis in connection with the subject matter of claim 4.”  However, the Federal Circuit ruled that under its precedent, Apple’s expert’s testimony was sufficiently confined to the argument made in Apple’s IPR petition to warrant consideration by the Board, since “a party is ‘not barred from elaborating on [its] arguments on issues previously raised.’” Masimo Corp. v. Apple Inc., No. 2022-1631, 2023 WL 5921622, at *5 (Fed. Cir. Sept. 12, 2023)