Federal Circuit Shuts Down Attempt To Use IPR Estoppel To Stop Reexams

Ex parte  reexaminationsand inter partes  review (“IPR”) are two different procedures available at the United States Patent and Trademark Office (“PTO”) to invalidate a patent. In an ex parte  reexamination, a third party can make a request for reexamination, but the third party will have no further involvement if a reexamination is granted. The reexamination will proceed only between the PTO and patent owner. In contrast, in an IPR, the third party, patent owner, and PTO are involved during the entire process. On December 1, the Federal Circuit affirmed the PTO's decision to deny a petition to terminate an ongoing ex parte reexamination. The dispute centered on whether the PTO was required to terminate an ongoing reexamination of a patent once a decision issued in an IPR involving the same patent. 

Here, Samsung Electronics Co. (“Samsung”) requested an ex parte  reexamination, while Unified Patents, LLC, of which Samsung is a member, filed an IPR of U.S. Patent No. 7,933,431 (“'431 patent”) owned by Gesture Technology Partners, LLC (“Gesture”). In the IPR, the PTO held that all but two claims of the ‘431 patent were unpatentable. Subsequent to that decision, the PTO, in the ex parte  reexamination, rejected the remaining two claims as invalid. Gesture appealed the PTO's decision not to terminate the ex parte  reexamination once the IPR decision issued.

On appeal, Gesture argued the ongoing reexamination should have been terminated once the final IPR decision issued pursuant to 35 U.S.C. § 315(e)(1), which prohibits an IPR petitioner from maintaining a proceeding at the PTO challenging the same patent after a final written decision in the IPR issues. If the ex parte  reexamination terminated when the IPR decision was issued, Gesture argued that the last two remaining claims would not have been invalidated.

The Federal Circuit disagreed that the reexamination should have been terminated. It explained that the word “maintain” does not apply to Samsung in the reexamination because Samsung has no role in the process after submitting its request. Once a reexamination begins, the proceeding is entirely PTO-driven, and the petitioner has no further involvement. That is, the petitioner “does not maintain the proceeding. Rather, the Patent Office does.” Since § 315(e)(1) restricts only petitioners, not the PTO, estoppel cannot force the PTO to stop a reexamination it is conducting on its own. Therefore, the PTO “properly denied Gesture's petition to terminate the ex parte reexamination proceeding.”

Had the Federal Circuit adopted Gesture's position, IPR estoppel could have been wielded strategically to shut down reexaminations midstream, even after substantial PTO work, undermining Congress's intent that reexamination serve as a distinct, independent mechanism for reevaluating issued patents. Instead, practitioners should recognize that filing parallel challenges, an IPR and an ex parte reexamination, remains a viable and strategically powerful option, because estoppel arising from an IPR will not halt a reexamination once it has begun. The practical consequence for patent owners is significant: they may be forced to defend the same patent in two separate, costly, and time-consuming validity proceedings before the same agency, simply because one mechanism is adversarial and the other is an examiner-driven inquiry. 

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