In Re: Gesture Technology Partners, LLC, Appeal No. 2025-1075 (Fed. Cir. Dec. 1, 2025) 

In our Case of the Week, the Federal Circuit affirmed the denial of a motion to terminate ex parte reexamination proceedings on a patent that had been the subject of a completed inter partes review.  In affirming the decision, the Court held that the estoppel provisions of 35 U.S.C. § 315(e)(1) do not apply to pending ex parte reexamination proceedings.  The ex parte reexamination in this case resulted in the invalidation of claims that had been upheld in the IPR, and the Court’s decision may augur an increase in ex parte reexamination requests accompanying parallel IPR petitions.

Gesture Technology’s U.S. Patent No. 5,982,853 was the subject of IPRs initiated by Samsung Electronics and others, in which the Board found all claims except claims 11 and 13 to unpatentable over the prior art.  The ’853 patent was also the subject of an ex parte reexamination that had been requested by Samsung, and following issuance of the final written decision in the IPR, Gesture moved to terminate the reexamination pursuant to 35 U.S.C. § 351(e)(1), providing that the petitioner in a completed IPR cannot “request or maintain a proceeding before the Office” with respect to any affected claim.  The patent office denied the motion, and the examiner went on to find claims 11 and 13 invalidated as anticipated.

The Federal Circuit affirmed, pointing out that the statutory language provides that “[t]he petitioner in an [IPR] … may not request or maintain a proceeding before the Office.”  In an ex parte reexamination, it is the Patent Office that maintains the proceeding, not the petitioner—while an ex parte reexam may be thought of as being initiated by the petitioner, it is then maintained by the Patent Office following initiation.  The Court concluded that the Board did not err in maintaining the pending ex parte reexam proceedings following the written decision upholding claims 11 and 13.  The court went on to affirm the Patent Office’s invalidation of those two remaining claims.

The opinion can be found here.

By Michael Cofield

ALSO THIS WEEK

Seagen Inc. v. Daiichi Sankyo Co.Ltd., Appeal Nos. 2023-2424, -1176 (Fed. Cir. Dec. 2, 2025)

In an appeal from a $42 million jury verdict against appellant Daiichi’s Enhertu® cancer drug, the Federal Circuit reversed, finding all claims of Seagen’s U.S. Patent No. 10,808,039 invalid for lack of written description and enablement in its claimed priority application.  The ’039 patent—which covers an antibody-drug conjugate used to target cancer cells—had been filed in 2019 following the 2015 release of Enhertu®, but claimed priority to an application Seagen had filed in 2004.  Daichii did not appeal the jury’s finding of infringement, but based on its finding that the 2004 application did not support or enable the ’039 patent’s claims, the Court found them to be anticipated by Enhertu® and therefore invalid.

As relevant to the appeal, the Court found that the 2004 application did not sufficiently disclose a subgenus of tetrapeptides recited in the claims of the ’039 patent, which served as a specific “linker” between the claimed compound’s antibody and a drug moiety.  While the 81-member subgenus was “encompassed” by the 2004 application alongside some 47 million other tetrapeptides that could potentially serve as a linker, the Court found the jury had been presented with no substantial evidence that it was “clearly discernable in the generalized formula” that was the subject of that application, or that a skilled artisan could arrive at the subgenus without undue experimentation.  Accordingly, the Federal Circuit reversed the district court’s denial of judgment as a matter of law for Daiichi and vacated the damages award.

The opinion can be found here.

By Jason Wrubleski

Adnexus Inc. v. Meta Platforms, Inc., Appeal No. 2024-1551 (Fed. Cir. Dec. 5, 2025)

In an appeal from the dismissal of an infringement case for failure to state a claim, the Federal Circuit reversed.  Appellant Adnexus owns U.S. Patent No. 8,719,101 describing a system for targeted online advertising, which delivers relevant ads to users while avoiding unwanted ads.  Adnexus sued Meta, alleging that Meta’s Lead Ads product infringes this patent, and Meta moved to dismiss. The district court found that Adnexus failed to plead facts concerning a limitation describing the retrieval of a user profile that includes delivery method preferences for online ads, and dismissed the case.

The Federal Circuit reversed, finding that Adnexus adequately pled the limitation by pointing to Meta’s storage of a user’s delivery preferences from their profile using cookies that can be retrieved by Lead Ads, which Adnexus alleged is then used to automatically populate advertisers’ prefilled forms.  The Court found that the district court erred by implicitly construing “contact information” as distinct from “delivery method preferences” without giving Adnexus the opportunity to be heard on the proper construction of this term. The Federal Circuit declined to resolve the claim construction dispute itself, leaving that to the district court to determine on remand.

The opinion can be found here.

By Katie Clavere

This article summarizes aspects of the law and does not constitute legal advice. For legal advice with regard to your situation, you should contact an attorney.