Gesture Technology Partners, LLC v. Unified Patents, LLC

N OTE : This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
GESTURE TECHNOLOGY PARTNERS, LLC,
Appellant
v.
UNIFIED PATENTS, LLC,
Appellee
______________________
2023-1444
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00917.
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Decided: March 4, 2025
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J OHN WITTENZELLNER , Williams, Simons, and Landis
PLLC, Philadelphia, PA, argued for appellant. Also repre-
sented by E RIC CARR , MARK JOHN E DWARD MC CARTHY,
F RED WILLIAMS , Austin, TX.
DEBRA J ANECE MCC OMAS, Haynes and Boone, LLP,
Dallas, TX, argued for appellee. Also represented by DAVID
L. MCC OMBS; A NGELA M. OLIVER , Washington, DC; A LYSSA
J. HOLTSLANDER , R OSHAN MANSINGHANI , Unified Patents,
LLC, Chevy Chase, MD.
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GESTURE TECHNOLOGY PARTNERS , LLC v.
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Before MOORE , Chief Judge, PROST and STOLL, Circuit
Judges.
P ROST, Circuit Judge.
Gesture Technology Partners, LLC (“Gesture”) appeals
the final written decision of an inter partes review (“IPR”)
of U.S. Patent No. 7,933,431 (“the ’431 patent”), holding
that claims 7–9 and 12 are unpatentable and that claims
10, 11, and 13 were not shown unpatentable. Unified Pa-
tents, LLC v. Gesture Tech. Partners, LLC, No. IPR2021-
00917, 2022 WL 17096296, at *20 (P.T.A.B. Nov. 21, 2022)
(“Final Written Decision”). We affirm.
Gesture makes three arguments on appeal: (1) The
Board erred in determining that claim 7 is unpatentable
and by extension claims 8, 9, and 12 which depend from
claim 7 are also unpatentable; (2) the Board does not have
jurisdiction over IPRs involving expired patents, including
the ’431 patent; and (3) the Board erred by denying Ges-
ture’s request for discovery. In Apple, Inc. v. Gesture Tech-
nology Partners, LLC issued the same day as this opinion,
we affirmed the Board’s holding that, among others, claims
7–9 and 12 of the ’431 patent are unpatentable. See Apple
Inc. v. Gesture Tech. Partners, LLC, No. 23-1475 (Fed. Cir.
Mar. 4, 2025). Therefore, Gesture’s appeal with respect to
those same claims here is moot. And in a different Apple
Inc. v. Gesture Technology Partners, LLC proceeding, we
“confirm[ed] . . . that the Board has jurisdiction over IPRs
concerning expired patents.” 127 F.4th 364, 368–69 (Fed.
Cir. 2025). Thus, the only issue that remains here is
whether the Board erred by denying Gesture’s request for
additional discovery. We conclude that the Board did not
abuse its discretion by denying this request.
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GESTURE TECHNOLOGY PARTNERS , LLC v.
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B ACKGROUND
In May 2021, Unified Patents, LLC (“Unified Patents”)
filed a petition for IPR on claims 7–13 of the ’431 patent.
In August 2021, Gesture filed its Preliminary Patent
Owner Response to Unified Patent’s petition. As part of
Gesture’s argument to deny institution of the IPR, Gesture
noted that Unified Patents’ CEO did not “deny that one or
more of its Members is a party to one of the ‘Parallel Liti-
gations’ identified in the Petition.” J.A. 197; see also
J.A. 198 (listing Samsung Electronics Co., Ltd. (“Sam-
sung”), among others, as a possible member of Unified Pa-
tents). Gesture sought no discovery on the relationship of
these entities at that time. In January 2022, the Board
issued an order granting ex parte reexamination of the ’431
patent. See Ex Parte Gesture Tech. Partners, LLC, Reex-
amination No. 90/014,901. The request for reexamination
was filed by Samsung.
In February 2022, Gesture filed its Patent Owner Re-
sponse. Again, Gesture sought no discovery on the rela-
tionship between Unified Patents and Samsung. On
August 30, 2022, oral argument was heard in the Unified
Patents IPR, and according to the Board, “[t]he record was
effectively closed after the hearing.” J.A. 557.
On October 6, 2022, Gesture sent an email to the Board
requesting authorization to take discovery regarding the
relationship between Samsung and Unified Patents and re-
questing termination of the ex parte reexamination. See
J.A. 557. The Board denied these requests as premature
“based on [Gesture’s] statement that its request only ap-
plied after the Final Decision issued.” J.A. 557.
On November 21, 2022, the Board issued its final writ-
ten decision. And on December 6, 2022, Gesture renewed
its requests for discovery and termination of the ex parte
reexamination. In response, the Board “authorized [Ges-
ture] to file any motions or petitions concerning ex parte
reexamination No. 90/014,901 in ex parte reexamination
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matter No. 90/014,901, rather than in this AIA proceeding,
and in accordance with the rules governing ex parte reex-
amination.” J.A. 557–58.
Gesture requested reconsideration of its request for
discovery and its motion to terminate the ex parte exami-
nation. J.A. 558. The Board denied both requests. As to
the discovery request, the Board concluded that “Patent
Owner’s request [had] come[] too late.” J.A. 558. The
Board reasoned that Gesture “was aware that real party-
in-interest and privity were issues that could be raised in
this proceeding,” but “[Gesture] chose not to pursue any ar-
guments related to these issues in the Patent Owner Re-
sponse.” J.A. 559. Thus, the Board concluded that Gesture
had waived the question of whether Samsung was a real
party in interest or privy of Unified Patents. J.A. 559. As
to the motion to terminate, the Board concluded that the
IPR proceeding was not the “proper place to address” ter-
mination of the ex parte reexamination and again directed
Gesture to file concerns regarding the ex parte reexamina-
tion in that proceeding. J.A. 560.
Gesture appeals the Board’s denial of its request for
additional discovery. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review a Board’s decision whether to grant or deny
additional discovery for abuse of discretion. Wi-Fi One,
LLC v. Broadcom Corp., 887 F.3d 1329, 1338–40 (Fed. Cir.
2018). “An abuse of discretion is found if the decision: (1) is
clearly unreasonable, arbitrary, or fanciful; (2) is based on
an erroneous conclusion of law; (3) rests on clearly errone-
ous fact finding; or (4) involves a record that contains no
evidence on which the Board could rationally base its deci-
sion.” Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1380
(Fed. Cir. 2023) (quoting Ericsson Inc. v. Intellectual Ven-
tures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018)).
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Gesture sought discovery on the relationship between
Unified Patents and Samsung “to determine whether Sam-
sung is estopped from maintaining,” under 35 U.S.C.
§ 315(e)(1), Samsung’s reexamination proceeding. Appel-
lant’s Br. 26. 35 U.S.C. § 315(e)(1) recites:
The petitioner in an inter partes review of a claim
in a patent . . . that results in a final written deci-
sion . . . , or the real party in interest or privy of the
petitioner, may not . . . maintain a proceeding be-
fore the [Patent] Office . . . .
Id. (emphasis added). If, for example, Samsung is a real
party in interest or privy of Unified Patents, then under
this statutory provision, Gesture alleges that Samsung
may not maintain its ex parte reexamination.
The Board did not abuse its discretion in denying Ges-
ture’s request for additional discovery. The Board denied
Gesture’s discovery request based on a failure to raise the
fact question of whether Samsung was a real party in in-
terest or privy to Unified Patent’s IPR in its Patent Owner
Response (or at any time before oral argument concluded)
despite Gesture’s awareness of the potential relationship
between Unified and Samsung at least as early as August
2021. See J.A. 197–98. Yet Gesture did not make its dis-
covery request until more than a year later in October
2022. Gesture provides no explanation for waiting to re-
quest the additional discovery or indeed why the Board’s
denial was an abuse of discretion.
Instead, Gesture argues that “[t]he Board may grant
discovery related to the real party in interest . . . .” Appel-
lant’s Reply Br. 12 (emphasis added). Gesture relies on Ap-
plications in Internet Time, LLC v. RPX Corp. for support.
897 F.3d 1336 (Fed. Cir. 2018). There, the patent owner
appealed the Board’s decision that found a nonparty was
not a real party in interest or in privity with the petitioner.
We vacated and remanded that decision because “the
Board applied an unduly restrictive test for determining
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whether a person or entity is a ‘real party in interest.’” Id.
at 1339. On remand, we stated that “[i]n its discretion, the
Board may authorize additional discovery relevant to
whether [the nonparty] is either a real party in interest or
a privy . . . .” Id. at 1358 (emphasis added). Gesture’s reli-
ance on Applications in Internet Time is misplaced. Not
only did that case not involve the denial of a discovery mo-
tion reviewed for abuse of discretion, but there, the ques-
tion of whether the nonparty was a real party in interest or
privy was raised before the Board. Not so here. Moreover,
whether the Board may grant discovery is not determina-
tive of whether the Board abused its discretion by not
granting discovery.
For the reasons above, we conclude that the Board did
not abuse its discretion in denying Gesture’s request for
additional discovery.
C ONCLUSION
We have considered Gesture’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm.
AFFIRMED
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