In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the USPTO formed the Central Reexamination Unit (CRU) and staffed it with 15 year+ Examiners and legal experts. Later, after the loss of Inter Partes Reexamination in 2012, the USPTO added all newly filed reissue applications to the CRU Examiner’s regime.
Sterne Kessler’s utility and design reissue, reexamination, and supplemental examination team will share practice tips and insights into prosecuting these proceedings before this specialized examination group within the USPTO.
This month, we discuss whether the USPTO has jurisdiction to reexamine expired patents and whether statutory estoppel applies to ongoing ex parte reexamination proceedings initiated by a party in an inter partes review (IPR) that resulted in a Final Written Decision.
Does the USPTO Have Jurisdiction to Reexamine an Expired Patent?
Short answer: Yes.
In In re Gesture Tech. Partners, No. 2024 -1038 (Fed. Cir. Dec. Jan. 27, 2025), the court addressed whether the USPTO lacked jurisdiction over reexamination of an expired patent. Concurrently, the Board determined whether it had jurisdiction over inter partes review (IPR) proceedings filed after a patent expires. See Gesture Tech. Partners, LLC v. Unified Patents, LLC, No. 23-1444 (Fed. Cir. 2025). The Federal Circuit found proper jurisdiction in both cases and cited its decision regarding the IPR in the reexamination case. The court reaffirmed that the Board retains jurisdiction over IPRs and the USPTO, including the Board, retains jurisdiction over reexaminations involving expired patents.
Relying on the public rights doctrine, which allows Congress to assign certain matters to non-Article III forums when they involve public rights, the court explained that reviewing an earlier patent grant implies a review of public rights, making expiration irrelevant. Id. at 6–7; see Oil States Energy Services v. Greene’s Energy Group, 584 U.S. 325, 334–35 (2018). Even after expiration, a patent confers residual rights, and the USPTO’s authority to review validity of the initial grant persists.
Of note, the U.S. Supreme Court denied cert on this related issue for Gesture Tech. Partners, LLC v. Unified Patents, LLC, No. 24-1281 (U.S. Nov. 17, 2025).
So, both the PTAB and CRU have proper jurisdiction over IPR and reexamination proceedings.
Does Statutory Estoppel Under 35 U.S.C. § 315(E)(1) Apply to Ongoing Ex Parte Reexamination Proceedings Initiated by a Party to an IPR That Resulted in a Final Written Decision?
Short answer: No.
This critical issue was addressed in In re Gesture Tech. Partners, LLC, No. 2025-1075 (Fed. Cir. Dec. 1, 2025).
In November 2021, Samsung requested an ex parte reexamination of the patent at issue. The USPTO granted the reexamination in January 2022. While the reexamination was pending, IPRs concerning the same patent were also underway. Unified Patents, LLC, an organization of which Samsung is a member, petitioned for one of the IPRs. In November 2022 before a decision on the reexamination, the Board issued final written decisions in the IPRs, invalidating most of the claims. In re Gesture Tech. Partners, LLC, No. 2025-1075 at 3 (Fed. Cir. Dec. 1, 2025).
Gesture then requested that the USPTO terminate the pending ex parte reexamination, arguing that Samsung, as a party to the IPR with a final written decision, is barred under § 315(e)(1) from “maintain[ing] a proceeding” before the Office challenging the patent on grounds it could have raised in the IPR. Id.
The Federal Circuit found that Samsung was not maintaining a proceeding as required by statute, rather the USPTO was the party maintaining the proceeding. Ex parte reexamination bars involvement of the requester in the reexamination after the optional patent owner statement process. The court explained a requester requests a reexamination (35 U.S.C. § 302) and may file a reply (35 U.S.C. § 304) if a patent owner files a statement, but the requester is not the party maintaining the proceeding; the USPTO does on behalf of the public. In re Gesture Tech. Partners at 6.
As the USPTO, not Samsung through Unified, was the party maintaining the reexamination, the Federal Circuit concluded that § 315(e)(1) estoppel is inapplicable against the USPTO for ongoing ex parte reexaminations.
