Federal Circuit Rules that Section 315(e)(1) Estoppel Does Not Apply to Pending Ex-Parte Reexamination and that the Patent Office has Jurisdiction to Adjudicate Expired Patents During Ex-Parte Reexamination

The Federal Circuit, in In re Gesture Tech. Partners, LLC, 2025-1075 (Dec. 1, 2025), clarified that the IPR estoppel provision, 35 U.S.C. § 315(e)(1), does not apply to pending ex parte reexamination proceedings, as well as that the Patent Office has jurisdiction to adjudicate expired patents during ex parte reexamination.

The case involved U.S. Patent 7,933,431 (“the ’431 patent”) owned by Gesture Technology Partners, LLC (“Gesture”). The ’431 patent expired on July 7, 2020. Id. at 2. In 2021, Samsung Electronics Co. (“Samsung”) sought ex parte reexamination of the ’431 patent. Id. at 4. While the reexamination was pending, Unified Patents, LLC, an organization to which Samsung belongs, filed an IPR petition challenging some claims of the ’431 patent. Id. at 2. The Board issued a final written decision (“FWD”) in the IPR before the ex parte reexamination was concluded. Gesture immediately petitioned the Patent Office to terminate the ongoing ex parte reexamination under 35 U.S.C. § 315(e)(1) because an FWD had issued and Samsung could not maintain a challenge to the ’431 patent on grounds that it could have raised in its IPR. Id. at 3. The Patent Office denied the petition. In the ex-parte reexamination, an examiner then rejected two claims of the then expired ’431 patent, and the Board affirmed the rejections. Id. at 3. Gesture appealed.

The Federal Circuit first addressed the estoppel issue, reasoning that based on the language of 35 U.S.C. § 315(e)(1), estoppel does not apply to pending ex parte reexamination proceedings. Id. at 6. The Court explained that under Section 315(e)(1), an IPR petitioner “‘may not request or maintain a proceeding before the Office’ on certain grounds after the IPR decision issues.” The Federal Circuit reasoned that the estoppel provision of Section 315(e)(1) does not apply to ongoing ex parte reexaminations because, while a petitioner can request reexamination and may have an opportunity for a reply, it is the Patent Office, not the petitioner, that maintains the ex parte reexamination proceeding, as the petitioner can have no further involvement in the proceeding beyond that possible reply. Id. at 6.

The Federal Circuit then moved to the jurisdictional issue related to adjudicating the validity of expired patents. The Federal Circuit referenced its previous holding that in IPRs, the Patent Office maintains jurisdiction to adjudicate expired patents because a patent owner maintains some rights, including the right to sue for past damages. Id. at 9 (citing Apple Inc. v. Gesture Tech. Partners, LLC, 127 F.4th 364, 368–69 (Fed. Cir. 2025)). The Federal Circuit then stated that the same reasoning applies to ex parte reexaminations, because like in IPRs, even after patent expiry the patent owner maintains some rights, including the right to sue for past damages. In re Gesture, 2025-1075 at 9.

This decision expands the reach of ex parte reexamination proceedings by exempting pending proceedings from estoppel under Section 315(e)(1) and by explicitly ruling that the Patent Office can adjudicate expired patents during ex parte reexamination. This decision provides guidance on the potential role and timing of including ex parte reexamination in a patent challenge strategy, particularly in view of the uncertainty that presently surrounds IPR proceedings.