In Re: Affinity Labs of Texas, LLC
856 F.3d 883
| Fed. Cir. | 2017Background
- Affinity Labs owns U.S. Patent No. 7,324,833, directed to displaying and controlling audio files of a portable media player on a different electronic device (e.g., car audio) via a graphical user interface and soft buttons.
- Three reexamination requests were granted: King (ex parte), Volkswagen (inter partes), and Apple (inter partes); the PTO sua sponte merged the three reexaminations and later severed Volkswagen’s proceeding as to claims litigated in district court.
- Volkswagen litigated claims 28 and 35 in district court and lost its invalidity challenge; Apple settled and exited reexamination; King remained as an ex parte requester.
- Affinity petitioned under pre‑AIA 35 U.S.C. § 317(b) to terminate the merged reexamination entirely, arguing estoppel based on Volkswagen’s adverse final judgment; PTO denied termination except as to claims 28 and 35 in the severed Volkswagen reexamination.
- Examiners rejected numerous claims; the PTAB affirmed rejections in two decisions (the court affirms the -4281 Board Decision upholding unpatentability of claims 1–27, 37–42, 45–46 and remands only to correct record that claim 36 is rejected).
Issues
| Issue | Affinity's Argument | PTO/Intervenor's Argument | Held |
|---|---|---|---|
| Scope of §317(b) estoppel—must the PTO terminate all merged reexaminations when a requester loses in district court? | §317(b) requires termination of the pending inter partes reexamination(s) in which the losing requester participated; merging shouldn’t expand estoppel to claims not litigated. | §317(b) estoppel is claim‑based and applies only to claims actually decided against the requester; PTO followed MPEP practice in severing and limiting estoppel to litigated claims. | Court: §317(b) plain text limits estoppel to the specific claims decided against the requester; PTO denial of full termination affirmed. |
| Whether §317(b) estoppel applies to ex parte reexamination or to non‑party requesters (Apple) | Estoppel should bar challenges across merged proceedings, including ex parte and other inter partes requests tied to the same patent. | §317(b) by its terms applies only to inter partes reexamination requesters who were parties (or privies) in the civil action; it does not reach ex parte proceedings or unrelated requesters. | Court: §317(b) does not reach ex parte reexaminations and does not apply to Apple (not a party/privy); no termination required. |
| Anticipation by Dwyer of claims 1–27, 39, 45 (graphical item with name; preprogrammed soft buttons) | Dwyer does not disclose a portable device displaying a named graphical interface item or preprogrammed soft buttons linked to audio sources as claimed. | Dwyer discloses header/title data uploaded from recorder to PC, touch‑screen navigation, icons/fields acting as selectable buttons tied to stored audio—thus anticipates claimed elements. | Court: Substantial evidence supports PTAB that Dwyer discloses the limitations; anticipation/obviousness upheld. |
| Obviousness over Naim + Lee (communication of name; physical mounting interface) and weight of objective indicia | Naim and Lee do not disclose communicating a name field to another device or a physical mounting interface (Lee allegedly only wireless); Affinity’s commercial success and licensing show nonobviousness. | Naim contemplates upload of recorded files (with identifying info) to a PC; Lee teaches a car multimedia device with soft buttons and a physical/wire interface can be wireless under broadest reasonable construction; commercial evidence lacks nexus/specificity. | Court: Substantial evidence supports PTAB’s obviousness finding; claim constructions and nexus analysis proper; objective indicia afforded little weight. |
Key Cases Cited
- Pride Mobility Prods. Corp. v. Permobil, Inc., 818 F.3d 1307 (Fed. Cir.) (standard of review for PTO decisions under APA)
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (agency legal conclusions de novo, facts for substantial‑evidence review)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (law of obviousness and rationale for combining prior art)
- King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir.) (anticipation requires every claim limitation in a single reference)
- In re Rambus, Inc., 753 F.3d 1253 (Fed. Cir. 2014) (broadest reasonable interpretation during reexamination)
- Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir.) (nexus requirement for commercial success evidence)
- Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir.) (licenses require proof they reflect value of the patent, not litigation avoidance)