IPR Estoppel Doesn’t Extend to Ongoing Ex Parte Reexamination

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Why it matters

Core event: The U.S. Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision on December 1, 2025, holding that IPR estoppel under 35 U.S.C. § 315(e)(1) does not apply to ongoing ex parte reexaminations, allowing the USPTO to continue such proceedings after IPR final written decisions.[1][2][3][4][6]

Parties involved: Patent owner Gesture Technology Partners, LLC appealed the PTAB's rejection of two claims in an ex parte reexamination of its U.S. Patent (likely the '431 patent). Samsung Electronics Co. requested the reexamination; Samsung was also linked to an IPR petitioner, Unified Patents. Agencies include the USPTO/PTAB and Federal Circuit (Judges Lourie, Bryson, Chen).[2][3][6]

Context and timeline: Samsung requested ex parte reexamination, which the USPTO initiated and maintained under 35 U.S.C. § 305. Parallel IPRs (one by Unified Patents, including Samsung) issued final written decisions invalidating most claims. Gesture sought termination of the reexamination post-IPR, citing § 315(e)(1) estoppel barring IPR petitioners from "maintaining" proceedings; PTAB rejected claims as anticipated (e.g., by Liebermann), and Federal Circuit affirmed, noting USPTO—not petitioner—maintains reexams. The court also upheld PTAB jurisdiction post-patent expiration due to ongoing patentee rights.[1][2][3][4][6]

Newsworthiness: Issued December 1, 2025, this clarifies IPR estoppel limits, preserving ex parte reexamination as a low-cost, non-estoppel tool for challengers even after IPR losses or patent expiry—boosting parallel PTO strategies amid high IPR costs and bars. It impacts 2026 IP litigation by favoring reexams over IPRs for defendants avoiding estoppel traps.[2][3][5][8]

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