Case 1:22-cv-00622-RDA-TCB Document 1 Filed 05/27/22 Page 1 of 11 PageID# 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`
`GESTURE TECHNOLOGY PARTNERS,
`LLC,
`
`Plaintiff,
`
`v.
`
`KATHERINE K. VIDAL, in her official
`capacity as Under Secretary of Commerce for
`Intellectual Property and Director of the
`United States Patent and Trademark Office,
`
`Defendant.
`
`CIVIL ACTION NO.
`
`1:22-cv-622
`
`COMPLAINT FOR DECLARATORY
`AND INJUNCTIVE RELIEF
`
`Administrative Procedure Act Case
`
`ORIGINAL COMPLAINT
`
`Plaintiff Gesture Technology Partners, LLC (“Plaintiff”) files this original complaint
`
`against Katherine K. Vidal, in her official capacity as Under Secretary of Commerce for
`
`Intellectual Property and Director of the United States Patent and Trademark Office (“USPTO”)
`
`(hereafter “Defendant”) alleging, based on its own knowledge as to itself and its own actions, and
`
`based on information and belief as to all other matters, as follows:
`
`JURISDICTION AND VENUE
`
`1.
`
`This case arises under the Administrative Procedure Act (“APA”), 5 U.S.C. § 701
`
`et seq. The Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338.
`
`2.
`
`Venue is proper in this district pursuant to 28 U.S.C. § 1391(e) and 5 U.S.C. § 703.
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`

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`3.
`
`PARTIES
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`Plaintiff is a limited liability company organized under the laws of the State of
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`Ohio, with its principal place of business in Toledo, Ohio.
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`4.
`
`Defendant Katherine K. Vidal is the Under Secretary of Commerce for Intellectual
`
`Property and Director of the USPTO. The Director oversees the operations of the USPTO and is
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`statutorily vested with authority to decide whether to institute an inter partes review (IPR) of a
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`patent claim and whether to order an ex parte reexamination of a patent. 35 U.S.C. §§ 304 and
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`314. Defendant is being sued in her official capacity. Her principal place of business is in
`
`Alexandria, Virginia.
`
`FACTUAL ALLEGATIONS
`USPTO Jurisdiction Over Expired Patents
`
`5.
`
`A U.S. patent is granted for a term beginning on the date on which the patent issues
`
`and ending 20 years from the date on which the application for the patent was filed in the United
`
`States or, if the application contains a specific reference to an earlier filed application under 35
`
`U.S.C. § 120, from the date on which the earliest such application was filed. 35 U.S.C. § 154(2).
`
`6.
`
`In Oil States, the Supreme Court explained that the “decision to grant a patent is a
`
`matter involving public rights—specifically, the grant of a public franchise.” Oil States Energy
`
`Servs., LLC v. Greene's Energy Grp., LLC, 138 S. Ct. 1365, 1373 (2018) (emphasis in original) .
`
`“Specifically, patents are public franchises that the Government grants to the inventors of new and
`
`useful improvements.” Id. (internal quotation marks omitted). The Supreme Court explained that
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`“Congress [has] significant latitude to assign [the] adjudication of public rights to entities other
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`than Article III courts.” Id. at 1368. In exercising its “significant latitude,” Congress grants public
`
`franchises “subject to the qualification that the PTO has the authority to reexamine—and perhaps
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`cancel—a patent claim in an inter partes review.” Id. at 1368, 1374 (internal quotation marks
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`omitted). That same congressional grant conditioned the USPTO’s authority on the patentee’s
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`right to seek amendment of the challenged patent claims. 35 U.S.C. § 316(d)(1). The USPTO
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`itself has declared that the amendment process “preserve[s] the merited benefits of patent claims.”
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`Patent Quality Improvement: Post-Grant Opposition: Hearing Before the Subcomm. on Courts,
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`the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 108th Cong. 10 (2004)
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`(hereinafter “USPTO Gen. Counsel Toupin Statement”) (statement of USPTO General Counsel
`
`James A. Toupin). Accordingly, the USPTO may have jurisdiction to amend and cancel the claims
`
`of the patent (e.g., via inter partes review or ex parte reexamination) but only so long as the public
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`franchise (patent) exists.
`
`7.
`
`When a patent expires, however, the public franchise ceases to exist and the former
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`franchisee (e.g., the patent owner) no longer has the right to exclude others. At most, the patent
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`owner may be entitled to collect damages from violations of the public franchise that formerly
`
`existed through an infringement action in district court. But because the public franchise no longer
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`exists, the USPTO has nothing in its authority to cancel or amend. 37 C.F.R. § 1.530(j) (“No
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`amendment may be proposed for entry in an expired patent”); see In re Rambus, Inc., 753 F.3d
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`1253, 1256 (Fed. Cir. 2014) (explaining that a patentee is unable to make claim amendments in an
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`expired patent); Ex parte reexamination of U.S. Patent No. 8878949, Control No. 90/014,903,
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`Office Action, p. 2 (USPTO Feb. 17, 2022) (“no amendments . . . will be permitted in this
`
`proceeding” because “the ’949 patent is expired”), attached hereto as Exhibit N.
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`8.
`
`Expiration removes the patent from the USPTO’s jurisdiction and returns it to the
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`sole jurisdiction of the Article III courts, which have exclusive authority to govern claims for patent
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`damages.
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`
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`
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`USPTO’s Current IPRs and Ex Parte Reexaminations of the Expired Patents
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`9.
`
`Plaintiff is the sole owner of U.S. Patent Nos. 7,933,431 (the “’431 Patent”),
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`8,553,079 (the “’079 Patent”), 8,194,924 (the “’924 Patent”), and 8,878,949 (the “’949 Patent”)
`
`(the “GTP Patent(s)”).
`
`10.
`
`The ’431 Patent claims benefit under 35 U.S.C. § 120 to U.S. Patent Application
`
`Serial No. 09/612,225, which was filed on July 7, 2000. Accordingly, the ’431 Patent expired on
`
`July 7, 2020, with no patent term extension. A copy of the ’431 Patent is attached as Exhibit A.
`
`11.
`
`The ’079 Patent claims benefit under 35 U.S.C. § 120 to U.S. Patent Application
`
`Serial No. 09/433,297, which was filed on November 3, 1999. Accordingly, the ’079 Patent
`
`expired on November 3, 2019, with no patent term extension. A copy of the ’079 Patent is attached
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`as Exhibit B.
`
`12.
`
`The ’924 Patent claims benefit under 35 U.S.C. § 120 to U.S. Patent Application
`
`Serial No. 09/612,225, which was filed on July 7, 2000. Accordingly, the ’924 Patent expired on
`
`July 7, 2020, with no patent term extension. A copy of the ’924 Patent is attached as Exhibit C.
`
`13.
`
`The ’949 Patent claims benefit under 35 U.S.C. § 120 to U.S. Patent Application
`
`Serial No. 09/568,552, which was filed on May 11, 2000. Accordingly, the ’949 Patent expired
`
`on May 11, 2020, with no patent term extension. A copy of the ’949 Patent is attached as Exhibit
`
`D.
`
`14.
`
`Unified Patents, LLC filed a petition for an IPR of the ’431 Patent on May 14, 2021
`
`(i.e., after the expiration of the ’431 Patent). Unified Patents, LLC v. Gesture Technology Partners,
`
`LLC, IPR2021-00917, Paper 1 (P.T.A.B. May 14, 2021). The IPR was instituted on November
`
`22, 2021. IPR2021-00917, Paper 11 (P.T.A.B. Nov. 22, 2021). A copy of the IPR institution
`
`decision is attached as Exhibit E.
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`15.
`
`Apple Inc. filed a petition for an IPR of the ’431 Patent on May 21, 2021 (i.e., after
`
`the expiration of the ’431 Patent). Apple Inc. v. Gesture Technology Partners, LLC, IPR2021-
`
`00920, Paper 1 (P.T.A.B. May 21, 2021). The IPR was instituted on December 6, 2021. IPR2021-
`
`00920, Paper 12 (P.T.A.B. Dec. 6, 2021). A copy of the IPR institution decision is attached as
`
`Exhibit F.
`
`16.
`
`Apple Inc. filed a petition for an IPR of the ’079 Patent on May 18, 2021 (i.e., after
`
`the expiration of the ’079 Patent). Apple Inc. v. Gesture Technology Partners, LLC, IPR2021-
`
`00922, Paper 1 (P.T.A.B. May 18, 2021). The IPR was instituted on November 29, 2021.
`
`IPR2021-00922, Paper 10 (P.T.A.B. Nov. 29, 2021). A copy of the IPR institution decision is
`
`attached as Exhibit G.
`
`17.
`
`Apple Inc. filed a petition for an IPR of the ’924 Patent on May 26, 2021 (i.e., after
`
`the expiration of the ’924 Patent). Apple Inc. v. Gesture Technology Partners, LLC, IPR2021-
`
`00923, Paper 1 (P.T.A.B. May 26, 2021). The IPR was instituted on December 6, 2021. IPR2021-
`
`00923, Paper 10 (P.T.A.B. Dec. 6, 2021). A copy of the IPR institution decision is attached as
`
`Exhibit H.
`
`18.
`
`Apple Inc. filed a petition for an IPR of the ’949 Patent on June 2, 2021 (i.e., after
`
`the expiration of the ’949 Patent). Apple Inc. v. Gesture Technology Partners, LLC, IPR2021-
`
`00921, Paper 1 (P.T.A.B. June 2, 2021). The IPR was instituted on December 13, 2021. IPR2021-
`
`00921, Paper 8 (P.T.A.B. Dec. 13, 2021). A copy of the IPR institution decision is attached as
`
`Exhibit I.
`
`19.
`
`The following table summarizes dates associated with the IPRs of the GTP Patents.
`
`As shown in the table, each IPR petition was filed after the expiration of the respective GTP Patent.
`
`Accordingly, an IPR was instituted for each GTP Patent after the expiration of the GTP Patent:
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`IPR
`
`GTP Patent
`
`GTP Patent
`Expiration Date
`
`IPR Petition
`Date
`
`IPR Institution
`Decision Date
`
`IPR2021-00917
`
`’431 Patent
`
`July 7, 2020
`
`May 14, 2021
`
`Nov. 22, 2021
`
`IPR2021-00920
`
`’431 Patent
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`July 7, 2020
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`May 21, 2021
`
`Dec. 6, 2021
`
`IPR2021-00921
`
`’949 Patent
`
`May 11, 2020
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`June 2, 2021
`
`Dec. 13, 2021
`
`IPR2021-00922
`
`’079 Patent
`
`Nov. 3, 2019
`
`May 18, 2021
`
`Nov. 29, 2021
`
`IPR2021-00923
`
`’924 Patent
`
`July 7, 2020
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`May 26, 2021
`
`Dec. 6, 2021
`
`
`
`20.
`
`A request for ex parte reexamination of the ’431 Patent was filed on November 11,
`
`2021 (i.e., after the expiration of the ’431 Patent). An ex parte reexamination of the ’431 Patent
`
`was then ordered in January 2022. Ex parte reexamination of U.S. Patent No. 7933431, Control
`
`No. 90/014,901, Reexam Order (USPTO Jan. 11, 2022). A copy of the reexam order is attached
`
`as Exhibit J.
`
`21.
`
`A request for ex parte reexamination of the ’079 Patent was filed on November 11,
`
`2021 (i.e., after the expiration of the ’079 Patent). An ex parte reexamination of the ’079 Patent
`
`was then ordered in December 2021. Ex parte reexamination of U.S. Patent No. 8553079, Control
`
`No. 90/014,900, Reexam Order (USPTO Dec. 20, 2021). A copy of the reexam order is attached
`
`as Exhibit K.
`
`22.
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`A request for ex parte reexamination of the ’924 Patent was filed on November 11,
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`2021 (i.e., after the expiration of the ’924 Patent). An ex parte reexamination of the ’924 Patent
`
`was then ordered in December 2021. Ex parte reexamination of U.S. Patent No. 8194924, Control
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`No. 90/014,902, Reexam Order (USPTO Dec. 2, 2021). A copy of the reexam order is attached
`
`as Exhibit L.
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`23.
`
`A request for ex parte reexamination of the ’949 Patent was filed on November 11,
`
`2021 (i.e., after the expiration of the ’949 Patent). An ex parte reexamination of the ’949 Patent
`
`was then ordered in December 2021. Ex parte reexamination of U.S. Patent No. 8878949, Control
`
`No. 90/014,903, Reexam Order (USPTO Dec. 2, 2021). A copy of the reexam order is attached
`
`as Exhibit M.
`
`24.
`
`The following table summarizes dates associated with the ex parte reexaminations
`
`of the GTP Patents. As shown in the table, each request for ex parte reexamination was filed after
`
`the expiration of the respective GTP Patent. An ex parte reexamination of each GTP Patent was
`
`ordered after the expiration of the GTP Patent:
`
`Reexamination
`Control No.
`
`GTP Patent
`
`GTP Patent
`Expiration Date
`
`Reexamination
`Request Date
`
`Reexamination
`Order Date
`
`90/014,900
`
`’079 Patent
`
`Nov. 3, 2019
`
`Nov. 11, 2021
`
`Dec. 20, 2021
`
`90/014,901
`
`’431 Patent
`
`July 7, 2020
`
`Nov. 11, 2021
`
`Jan. 11, 2022
`
`90/014,902
`
`’924 Patent
`
`July 7, 2020
`
`Nov. 11, 2021
`
`Dec. 2, 2021
`
`90/014,903
`
`’949 Patent
`
`May 11, 2020
`
`Nov. 11, 2021
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`Dec. 2, 2021
`
`
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`COUNT 1: UNLAWFUL IPR INSTITUTIONS
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`The allegations of Paragraphs 1 through 24 are hereby re-alleged and incorporated
`
`
`25.
`
`by reference.
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`26.
`
`Under the APA, the Court “shall … hold unlawful and set aside” agency action
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`found to be “in excess of statutory jurisdiction, authority, or limitations, or short of statutory right.”
`
`U.S.C. § 706(2)(C).
`
`27.
`
`Proper forms of relief in this action include, but are not limited to the following:
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`a. issuing preliminary and permanent injunctions under 5 U.S.C. § 703;
`
`b. issuing declaratory relief under 5 U.S.C. § 703 and 28 U.S.C. §§ 2201-2202;
`
`and
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`c. holding unlawful and setting aside the USPTO’s actions (i.e., issuing a vactur
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`remedy) under 5 U.S.C. § 706(2).
`
`28.
`
`Defendant has instituted and maintained IPRs of the GTP Patents even though the
`
`GTP Patents all expired before any of the petitions for the IPRs were filed. Defendant’s actions
`
`were thus “in excess of [the] statutory jurisdiction, authority, or limitations” of Defendant’s powers
`
`because in view of Oil States Energy Servs., 138 S. Ct. 1365, the USPTO has no jurisdiction to
`
`cancel or amend claims of expired patents—as a public franchise no longer exists. Such actions
`
`are in violation of the APA.
`
`COUNT 2: UNLAWFUL EX PARTE REEXAMINATION ORDERS
`
`The allegations of Paragraphs 1 through 24 are hereby re-alleged and incorporated
`
`
`29.
`
`by reference.
`
`30.
`
`Under the APA, the Court “shall … hold unlawful and set aside” agency action
`
`found to be “in excess of statutory jurisdiction, authority, or limitations, or short of statutory right.”
`
`U.S.C. § 706(2)(C).
`
`31.
`
`Defendant has ordered and maintained ex parte reexaminations of the GTP Patents
`
`even though the GTP Patents all expired before the requests for the ex parte reexaminations were
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`-8-
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`

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`filed. Defendant’s actions are “in excess of [the] statutory jurisdiction, authority, or limitations”
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`of Defendant’s powers because in view of Oil States Energy Servs., 138 S. Ct. 1365, the USPTO
`
`has no jurisdiction to cancel or amend claims of expired patents—as a public franchise no longer
`
`exists. Such actions are in violation of the APA.
`
`
`
`32.
`
`PRAYER FOR RELIEF
`
`Plaintiff requests that the Court find in its favor and against Defendant, and that the
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`Court grant Plaintiff the following relief:
`
`a.
`
`Declare that Defendant had no jurisdiction to institute IPRs of the expired GTP
`
`Patents;
`
`b.
`
`Declare that Defendant had no jurisdiction to order ex parte reexaminations of the
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`expired GTP Patents;
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`c.
`
`d.
`
`e.
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`Set aside all decisions to institute IPRs of the expired GTP Patents;
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`Set aside all orders for ex parte reexaminations of the expired GTP Patents;
`
`Issue a preliminary injunction enjoining Defendant, and her officers, agents,
`
`employees, assigns, and all persons acting in concert or participating with her from continuing the
`
`IPRs against the expired GTP Patents;
`
`f.
`
`Permanently enjoin Defendant, and her officers, agents, employees, assigns, and all
`
`persons acting in concert or participating with her from continuing the IPRs against the expired
`
`GTP Patents;
`
`g.
`
`Issue a preliminary injunction enjoining Defendant, and her officers, agents,
`
`employees, assigns, and all persons acting in concert or participating with him from continuing the
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`ex parte reexaminations of the expired GTP Patents;
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`h.
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`Permanently enjoin Defendant, and her officers, agents, employees, assigns, and all
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`persons acting in concert or participating with her from continuing the ex parte reexaminations of
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`the expired GTP Patents;
`
`i.
`
`j.
`
`Award Plaintiff costs and attorney’s fees and expenses as allowed by law; and
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`All other and further relief as the Court may deem just and proper under the
`
`circumstances.
`
`Dated: May 27, 2022
`
`
`
`
`Respectfully submitted,
`
`DGKEYIPGROUP
`
`
`
`
`
`/s/ Cecil E. Key, Esq.
`Cecil E. Key, Esq.
`Virginia Bar No. 41018
`KEY IP LAW GROUP, PLLC
`1934 Old Gallows Road, Suite 350
`Vienna, Virginia 22182
`Phone: (703) 752-6276
`Fax: (703) 752-6201
`Email: cecil@keyiplaw.com
`
`M. Jarrad Wright
`Virginia Bar No. 68814
`DIMUROGINSBERG P.C.
`1101 King Street, Suite 610
`Alexandria, Virginia 22314
`Phone: (703) 684-4333
`Fax: (703) 548-3181
`Email: mjwright@dimuro.com
`
`Of Counsel:
`
`Fred I. Williams
`Texas State Bar No. 00794855
`Michael Simons
`Texas State Bar No. 24008042
`WILLIAMS SIMONS & LANDIS PLLC
`601 Congress Avenue, Suite 600 Austin, TX 78701
`Tel: 512-543-1354
`fwilliams@wsltrial.com
`msimons@wsltrial.com
`
`-10-
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`Case 1:22-cv-00622-RDA-TCB Document 1 Filed 05/27/22 Page 11 of 11 PageID# 11
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`
`Todd E. Landis
`State Bar No. 24030226
`WILLIAMS SIMONS & LANDIS PLLC
`2633 McKinney Ave., Suite 130 #366
`Dallas, TX 75204
`Tel: 512-543-1357
`tlandis@wsltrial.com
`
`John Wittenzellner
`Pennsylvania State Bar No. 308996
`WILLIAMS SIMONS & LANDIS PLLC
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`Tel: 512-543-1373
`johnw@wsltrial.com
`
`
`Attorneys for Plaintiff Gesture Technology
`Partners, LLC
`
`-11-
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