IPR Standing Arguments Not Presented to the Board Are Forfeited

Written by:Tyler S. Cox and Nathan D. Reeves

APPLE INC. v. GESTURE TECHNOLOGY PARTNERS, LLC

Before Moore, Prost, and Stoll. Appeal from the Patent Trial And Appeal Board.

Summary: A patent owner forfeits its argument that an IPR petitioner lacks standing under 35 U.S.C. § 315(e)(1) when it fails to present the argument to the Board.

Apple filed a petition for inter partes review challenging claims of a patent owned by Gesture relating to determining the position and orientation of various targets using a camera and light sources.  A week earlier, Unified Patents, LLC, a multi-member organization that includes Apple, requested IPR of an overlapping set of claims from the same Gesture patent.  The Board issued its final written decision in the Unified Patents IPR nine days before it issued its final written decision in the Apple IPR.  In both decisions, the Board determined that some of the claims were unpatentable and others were not unpatentable.

On appeal, Gesture argued that Apple had no standing to appeal the Board’s final written decision.  Gesture argued that 35 U.S.C. § 315(e)(1)’s statutory estoppel provision barred Apple from maintaining a proceeding before the Federal Circuit once the final written decision was issued in the Unified Patents IPR because Apple was a real party in interest in the Unified Patents IPR or the privy of Unified Patents.  The Federal Circuit held that Gesture had forfeited its standing argument.  The court ruled that whether a party is a real party in interest or a privy are questions of fact that cannot be decided in the first instance by an appellate court and must be raised in the underlying PTAB proceeding.  Gesture forfeited its standing argument because it knew that Apple was a member of Unified Patents more than a year before either final written decision issued and thus had sufficient opportunity to raise the issue below.  The Federal Circuit therefore reached the merits of the case and affirmed the Board’s patentability determinations.

Editor: Sean Murray