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**35 U.S.C. § 315(E)(1) ESTOPPEL IS INAPPLICABLE TO EX PARTE REEXAMINATION PROCEEDINGS
In re Gesture Tech. Ptrs., LLC, 25-1075 — On Monday in an opinion by Judge LOURIE, the Federal Circuit affirmed in part a USPTO ex parte reexamination decision that all claims of Gesture’s patent for a method of rapid TV camera and computer-based sensing of objects either anticipated or obvious. Gesture argued the USPTO erred in denying its motion to terminate the ex parte proceeding under 35 U.S.C. § 315(e)(1) because a single petitioner could not “maintain a proceeding” at the USPTO after issuance of a final written decision in an inter partes review (IPR) case challenging the same patent.
The Federal Circuit disagreed. The statute provided that a “‘petitioner in an [IPR] . . . may not request or maintain a proceeding before the Office’ on certain grounds after the IPR decision issues.” While a petitioner could request a reexamination or file a reply during ex parte, only the USPTO maintained the proceeding. Therefore, the statutory provision was inapplicable against the Patent Office as to ex parte reexamination proceedings.
(1 to 4 stars rate impact of opinion on patent & trademark law)
IPO PROVIDES FEEDBACK TO USPTO ON PTAB RULEMAKING
Yesterday IPO President KRISH GUPTA (Dell Technologies) submitted comments on IPO’s behalf in response to the USPTO’s October 17 Notice of Proposed Rulemaking on “Revision to Rules of Practice Before the Patent Trial and Appeal Board.” IPO expressed appreciation for the USPTO’s efforts to enhance efficiency and transparency in post-grant practice, and noted that IPO shares the Office’s goals of a predictable, high-quality, and well-functioning PTAB system. The comments noted that IPO members value stability in PTAB processes and encouraged the Office to consider refinements that would further strengthen confidence in the post-grant framework.
IPO’s letter offered recommendations on several provisions, including suggested adjustments to the proposed stipulation requirements, prior-proceeding bars, and rules relating to parallel litigation, to ensure consistency with the statutory structure of the America Invents Act and support long-term predictability for innovators, investors, and other stakeholders. IPO’s U.S. Post-Grant Patent Office Practice Committee assisted with preparing the comments.