in Re: Gesture Technology Partners, LLC v. Gesture Tech. Partners LLC, IPR2021- 00917 P.T.A.B. May 14, 2021 , Paper 1

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: GESTURE TECHNOLOGY PARTNERS, LLC,
Appellant
______________________
2025-1075
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/014,901.
______________________
Decided: December 1, 2025
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J OHN WITTENZELLNER, Williams Simons & Landis
PLLC, Philadelphia, PA, argued for appellant. Also repre-
sented by MARK J OHN EDWARD MC CARTHY , F RED
WILLIAMS .
MARY L. K ELLY , Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee John A. Squires. Also represented by S ARAH E.
CRAVEN, MICHAEL S. F ORMAN, N ICHOLAS T HEODORE
MATICH , IV, ROBERT J. MCMANUS .
______________________
Before L OURIE, BRYSON, and CHEN, Circuit Judges.
L OURIE, Circuit Judge.
Gesture Technology Partners, LLC (“Gesture”) appeals
from an ex parte reexamination decision of the United
States Patent and Trademark Office (“the Patent Office”)
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IN RE: GESTURE TECHNOLOGY PARTNERS, LLC 2
Patent Trial and Appeal Board (“the Board”) affirming the
unpatentability of claims 1–30 of its U.S. Patent 7,933,431
(“the ’431 patent”) as either anticipated or obvious. Ex
parte Gesture Tech. Partners LLC, No. 2024-002449, Reex-
amination 90/014,901 (P.T.A.B. Sep. 13, 2024) (“Decision”),
J.A. 1–50. Only claims 11 and 13 are at issue in this ap-
peal. For the following reasons, we affirm in part and dis-
miss in part.
BACKGROUND
The ’431 patent is directed to a method and apparatus
used “to enable rapid TV camera and computer based sens-
ing” of objects and human input for use in various applica-
tions, including “handheld devices, cars, and video games.”
’431 patent at Abstract. It originally issued with 31 claims.
Id. col. 25 l. 39–col. 26 l. 62.
Samsung Electronics Co. (“Samsung”) requested an ex
parte reexamination of the ’431 patent, J.A. 152–263,
which the Patent Office granted, J.A. 449–51.
While this ex parte reexamination was pending, so too
were two inter partes reviews (“IPRs”) concerning the ’431
patent. Unified Patents LLC, an organization of which
Samsung is a member, petitioned for one of the IPRs, seek-
ing to invalidate claims 7–13 of the ’431 patent. Unified
Patents LLC v. Gesture Tech. Partners LLC, IPR2021-
00917 (P.T.A.B. May 14, 2021), Paper 1 (petition for IPR),
J.A. 1102–62 (“the Unified Patents IPR”). Other entities,
none of which are party to this case, petitioned for the other
IPR, seeking to invalidate claims 1–31 of the ’431 patent.
Apple Inc. v. Gesture Tech. Partners LLC, IPR2021-00920
(P.T.A.B. May 21, 2021), Paper 1 (petition for IPR), J.A.
1179–259 (“the Apple IPR”). Both resulted in the Board
issuing a final written decision, invalidating claims 7–9
and 12 in the Unified Patents IPR, and invalidating claims
1–10, 12, and 14–31 in the Apple IPR.
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IN RE: GESTURE TECHNOLOGY PARTNERS, LLC 3
After the Board issued its final written decision in the
Unified Patents IPR, Gesture petitioned to terminate the
pending ex parte reexamination, asserting Samsung, as a
party to the Unified Patents IPR, was estopped under
35 U.S.C. § 315(e)(1) from “maintain[ing] a proceeding” at
the Patent Office challenging the ’431 patent on grounds it
could have raised in the IPR. See J.A. 643–71. The Patent
Office denied the petition and concluded that the estoppel
provision of § 315(e)(1) does not apply to ongoing ex parte
reexaminations. J.A. 908–10.
The two IPR decisions have both been before us and,
after Gesture initiated this appeal, we held that all claims
but 11 and 13 of the ’431 patent, both of which depend from
claim 7, are unpatentable. Apple Inc. v. Gesture Tech. Part-
ners, LLC, 129 F.4th 1367, 1370 (Fed. Cir. 2025); Gesture
Tech. Partners, LLC v. Unified Patents, LLC, No. 2023-
1444, 2025 WL 687040, at *1 (Fed. Cir. Mar. 4, 2025).
In this ex parte reexamination, an examiner issued a
final office action rejecting claims 11 and 13 as anticipated
by U.S. Patent 5,982,853 (“Liebermann”), J.A. 559, and the
Board affirmed, Decision at 13–26. Liebermann is directed
to:
An electronic communications system for the deaf
[that] includes a video apparatus for observing and
digitizing the facial, body[,] and hand and finger
signing motions of a deaf person, an electronic
translator for translating the digitized signing mo-
tions into words and phrases, and an electronic out-
put for the words and phrases. The video
apparatus desirably includes both a video camera
and a video display which will display signing mo-
tions provided by translating spoken words of a
hearing person into digitized images.
J.A. 951 at Abstract.
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IN RE: GESTURE TECHNOLOGY PARTNERS, LLC 4
A chart showing the timeline of the ex parte reexami-
nation and the two IPRs concerning the ’431 patent is pro-
vided below:
Nov. 2021 Samsung Requests ex parte Reexamination
Jan. 2022 Patent Office Grants Reexamination
90/014,901
Nov. 2022 Board Issues Unified Patents IPR Final Written
Decision, Invalidating Claims 7–9 and 12
IPR2021-00917
Nov. 2022 Board Issues Apple IPR Final Written Decision,
Invalidating Claims 1–10, 12, and 14–31
IPR2021-00920
Sep. 2024 Board Issues Reexamination Decision,
Invalidating Claims 1–30
Appeal 2024-002449
Mar. 2025 This Court Affirms IPR Decisions Invalidating
Claims 1–10, 12, and 14–31
IPR2021-00917 and IPR2021-00920
Gesture timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
As noted, we have previously affirmed the Board’s in-
validation of all claims of the ’431 patent but claims 11 and
13. Apple Inc., 129 F.4th at 1370; Gesture Tech. Partners,
2025 WL 687040, at *1. Our previous “affirmance renders
final a judgment on the invalidity of [those claims], and has
an immediate issue-preclusive effect on any pending . . . ac-
tions involving [those claims].” See XY, LLC v. Trans Ova
Genetics, L.C., 890 F.3d 1282, 1294 (Fed. Cir. 2018). We
therefore dismiss Gesture’s appeal as to the previously in-
validated claims. See id. at 1295. Thus, we need only ad-
dress Gesture’s challenges to claims 11 and 13, which both
depend from claim 7.
The relevant claims read as follows:
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IN RE: GESTURE TECHNOLOGY PARTNERS, LLC 5
7. Handheld computer apparatus comprising:
a housing;
a camera means associated with said housing for
obtaining an image using reflected light of at least
one object positioned by a user operating said ob-
ject;
computer means within said housing for analyzing
said image to determine information concerning a
position or movement of said object; and
means for controlling a function of said apparatus
using said information.
11. Apparatus according to claim 7, further includ-
ing means for transmitting information.
13. Apparatus according to claim 7, wherein said
apparatus is a cellular phone.
’431 patent col. 25 l. 61–col. 26 l. 5, col. 26 ll. 12–13, col. 26
ll. 16–17 (emphasis added).
Gesture argues that the Patent Office erred in deter-
mining that the estoppel provision of 35 U.S.C. § 315(e)(1)
does not apply to pending ex parte reexamination proceed-
ings and that the Board incorrectly found that claims 11
and 13 of the ’431 patent were anticipated by Liebermann.
We address each in turn.
I
We begin with Gesture’s argument that the Patent Of-
fice erred by not terminating the subject ex parte reexami-
nation because it improperly interpreted the estoppel
provision of 35 U.S.C. § 315(e)(1) as being inapplicable to
ongoing ex parte reexamination proceedings. Statutory
construction is a question of law that we review de novo.
See Leming v. Sec’y of Health & Hum. Servs., 98 F.4th
1107, 1111 (Fed. Cir. 2024) (citation omitted).
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IN RE: GESTURE TECHNOLOGY PARTNERS, LLC 6
Section 315 provides in relevant part:
The petitioner in an [IPR] of a claim in a patent un-
der this chapter that results in a final written deci-
sion under section 318(a), or the real party in
interest or privy of the petitioner, may not request
or maintain a proceeding before the Office with re-
spect to that claim on any ground that the peti-
tioner raised or reasonably could have raised
during that [IPR].
35 U.S.C. § 315(e)(1) (emphases added).
Gesture specifically argues that the Patent Office
should have terminated the ongoing ex parte reexamina-
tion because Samsung, as a member of the petitioner in the
Unified Patents IPR challenging the ’431 patent, cannot
“maintain a proceeding” at the Patent Office challenging
the same patent after a final written decision in the IPR
issued. Gesture argues that, because an ex parte reexami-
nation is a “proceeding before the Office,” § 315(e)(1) estop-
pel applies. We disagree.
The statute provides that “[t]he petitioner in an [IPR]
of a claim of a patent . . . may not request or maintain a
proceeding before the Office” on certain grounds after the
IPR decision issues. 35 U.S.C. § 315(e)(1) (emphases
added). A petitioner requests a reexamination, id. § 302,
and a petitioner may file a reply if the patent owner chooses
to file a statement, id. § 304, but the petitioner does not
maintain the proceeding. Rather, the Patent Office does.
See Alarm.com Inc. v. Hirshfeld, 26 F.4th 1348, 1351 (Fed.
Cir. 2022) (citing 35 U.S.C. § 305; 37 C.F.R. § 1.550(g))
(“The [reexamination] statute does not provide for any in-
volvement of the requester in the reexamination after the
optional reply.”). We thus conclude that the estoppel pro-
vision of 35 U.S.C. § 315(e)(1) is inapplicable against the
Patent Office to ongoing ex parte reexamination proceed-
ings. The Patent Office therefore properly denied Gesture’s
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IN RE: GESTURE TECHNOLOGY PARTNERS, LLC 7
petition to terminate the ex parte reexamination proceed-
ing.
II
We turn next to Gesture’s arguments that the Board
erred in affirming the examiner’s determination finding
that Liebermann anticipates claims 11 and 13 of the ’431
patent. Specifically, Gesture argues that (1) Liebermann
does not disclose certain limitations of claims 11 and 13
and (2) the Patent Office has no jurisdiction over the ’431
patent because it is expired. Opening Br. 20–42, 62.
We start with Gesture’s argument that Liebermann
does not disclose a specific limitation. Gesture argues that
the Board erred in finding that Liebermann discloses claim
7’s “means for controlling a function of [the handheld com-
puter apparatus] using [information concerning a position
or movement of an object].” “Anticipation is a question of
fact we review for substantial evidence.” In re Chudik,
851 F.3d 1365, 1371 (Fed. Cir. 2017) (citation omitted).
“The scope and content of the prior art is a question of fact,
reviewed for substantial evidence.” Teva Pharms. USA,
Inc. v. Corcept Therapeutics, Inc., 18 F.4th 1377, 1382 (Fed.
Cir. 2021) (citation omitted).
The Board determined that “means for controlling a
function of [the handheld computer apparatus] using [in-
formation concerning a position or movement of an object]”
is a means-plus-function claim requiring the apparatus to
“(1) receive position information, (2) correlate the position
information with a function of the apparatus, and (3) cause
the apparatus to perform the function.” Decision at 9
(cleaned up). The Board construed “correlate” as “to place
in or bring into mutual or reciprocal relation; establish in
orderly connection.” Id. at 10. The Board then found that
Liebermann’s device “correlates” image information from
its camera with a function by “transforming the image into
unique identifiers to be transmitted.” Id. at 23.
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IN RE: GESTURE TECHNOLOGY PARTNERS, LLC 8
Gesture argues that the Board’s finding with respect to
correlating information is not supported by substantial ev-
idence. Specifically, Gesture argues that Liebermann does
not correlate information with a function of the apparatus,
and therefore does not anticipate the limitation because
“Liebermann’s sending function is always selected, and the
sending function always operates in the same manner . . . .
There is no relationship, or correlation, between the con-
tent of the captured image and the selection of the sending
function.” Opening Br. 35. We disagree.
Liebermann discloses a “transmitter/receiver device”
with a camera that does “initial processing” of images cap-
tured by the camera. J.A. 970 col. 6 ll. 42–47. The “initial
processing” consists of collapsing the captured image “into
a small set of fixed identifiers,” which are then sent to a
data processing center. Id. col. 6 ll. 47–52. Liebermann’s
Figure 1 illustrates its process. Figure 1 discloses that a
“deaf person uses sign language in front of [the] device,”
then a “camera in the device captures the images,” and
then the “images [are] reduced to pertinent data after [the]
gesture start and end is determined.” J.A. 952. This, com-
bined with Liebermann’s statement that “[a]t the end of the
initial processing, the resulting information is sent as
data . . . to the data processing center,” J.A. 970 col. 6 ll.
49–52, supports the Board’s conclusion “that Liebermann’s
‘transmit’ function is controlled from moment to moment to
send varying digitized data during the process of ‘transmit-
ting the digitized signing motions or their digital identifi-
ers to the translating means,’” Decision at 24 (quoting J.A.
969 col. 3 ll. 40–42). That is, Liebermann’s disclosures sup-
port the conclusion that its device “correlates [an] image
with a transmission function by transforming the image
into unique identifiers to be transmitted.” Id. at 23. Sub-
stantial evidence therefore supports the Board’s conclusion
that Liebermann discloses correlating position information
with a function of the apparatus.
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IN RE: GESTURE TECHNOLOGY PARTNERS, LLC 9
Next, Gesture argues that the Board had no jurisdic-
tion to invalidate the ’431 patent because it was expired.
We have previously rejected similar arguments with re-
spect to IPRs because a patentee “maintains some rights,
such as [the right to bring] an action for past damages” af-
ter its patent expires, thus “creat[ing] a live case or contro-
versy, which can be adjudicated by an IPR and in
proceedings before this court on appeal.” Apple Inc. v. Ges-
ture Tech. Partners, LLC, 127 F.4th 364, 368–69 (Fed. Cir.)
(“We confirm here that the Board has jurisdiction over
IPRs concerning expired patents.”), cert. denied, No. 24-
1280 (U.S. Nov. 17, 2025). Gesture offers no argument why
ex parte reexamination proceedings are, or should be,
viewed differently, and instead repeats arguments that we
have already rejected with respect to IPRs. Indeed, the
reasoning we applied for IPRs applies here. A patent
owner maintains some rights after the patent expires, in-
cluding the right to sue for past damages, which can create
a live case or controversy that can be resolved by an ex
parte reexamination. See id. We reject Gesture’s argument
here with respect to ex parte reexaminations and confirm
that the Board has jurisdiction over ex parte reexamina-
tions concerning expired patents.
CONCLUSION
We have considered Gesture’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm the decision of the Board as to claims 11 and 13. We
dismiss as to claims 1–10, 12, and 14–30.
AFFIRMED-IN-PART AND DISMISSED-IN-PART
COSTS
Costs to appellee.
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