The Federal Circuit recently made ex parte reexamination proceedings more attractive for those accused of patent infringement. The Court’s decision in In re Gesture Technology Partners, LLC, No. 2025-1075 (Fed. Cir. Dec. 1, 2025) (hereinafter “Gesture Technology”) addressed a Samsung‑requested ex parte reexamination that involved an expired patent and continued even after related inter partes reviews (IPRs) reached final written decisions. The Federal Circuit’s decision makes ex parte reexaminations more attractive and a worthy addition to a patent challenger’s toolkit.

Discretionary Denial in IPRs Has Practitioners Looking Elsewhere

The United States Patent and Trademark Office’s (USPTO) shift to increased discretionary denial in IPR proceedings became a major patent storyline in 2025. Since the March implementation of expanded discretionary denial, many have sought alternatives to the IPR process, noting IPR’s high costs, timing requirements, stringent estoppel rules, and real-party-in-interest identification requirements.

Practitioners have noticed that ex parte reexamination provides a solid alternative that resolves many of these issues. Requests for ex parte reexamination are at an all-time high, jumping 46 percent between Q2 and Q3, and are expected to surpass 2024’s requests by a wide margin. Meanwhile, ex parte reexaminations cost a small fraction of what an IPR costs, with USPTO filing fees alone being less than $3,000 for a small entity, compared to over $50,000 for an IPR. Moreover, ex parte reexaminations can be filed whenever and by whomever (including by the patent owner), with the option of remaining anonymous and no estoppel provisions.

The Gesture Technology Decision Expands the Argument for Ex Parte Reexamination

Samsung requested ex parte reexamination of U.S. Patent No. 7,933,431 (the “431 Patent”) in November 2021. When it made its request, two IPRs were pending regarding the ’431 Patent, one brought by Unified Patents (of which Samsung is a member) and one brought by Apple. Final written decisions were issued in both IPRs in November 2022. After those decisions, Gesture Technology sought to have the ex parte reexamination proceeding dismissed per 35 U.S.C. § 315(e)(1) asserting that Samsung was a party to the Unified Patents IPR and should be estopped from maintaining the ex parte reexamination. Section 315(e)(1) states:

The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision 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 respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

35 U.S.C. § 315(e)(1) (emphasis added). The USPTO disagreed, denied the Petition, and subsequently invalidated claims of the ’431 Patent in the ex parte reexamination. Gesture Technology appealed.

The Federal Circuit held that “[T]he petitioner does not maintain the proceeding. Rather, the Patent Office does…We thus conclude that the estoppel provision of 35 U.S.C. § 315(e)(1) is inapplicable against the Patent Office to ongoing ex parte reexamination proceedings.” See Gesture Technology on page 6. The decision was largely based on how a petitioner’s involvement in an ex parte reexamination ends after submitting an optional reply to an optional patent owner statement. 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 involvement of the requester in the reexamination after the optional reply.”).

Further, the Federal Circuit confirmed that the USPTO may maintain ex parte reexaminations of expired patents, noting its earlier decisions that rejected similar arguments towards IPRs because “a patentee maintains some rights, such as the right to bring an action for past damages after its patent expires, thus creating a live case or controversy, which can be adjudicated.” See Gesture Technologies on page 9 (citation modified).

How the Gesture Technologies Decision Shifts Strategy

Before Gesture Technologies, many patent owners argued that once an IPR reached a final written decision, § 315(e)(1) estoppel should force the USPTO to terminate any ex parte reexaminations involving the same petitioner. However, because the USPTO “maintains” any ex parte reexamination, ongoing reexaminations need not terminate when estoppel later attaches to the petitioner.

Thus, requesting ex parte reexamination early, such as upon learning of the patent, upon receipt of a demand letter, or while parallel litigation plays out, can preserve an administrative path to invalidity that cannot be foreclosed once set in motion.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.