IN RE: AFFINITY LABS OF TEXAS, LLC, Appellant
2016-1092, 2016-1172
United States Court of Appeals, Federal Circuit
May 5, 2017
883 F.3d 859
Because Boyd‘s method-of-execution claim is timely, see id. at 859, so is his due process claim. The same two-year limitations period governs both claims, and the claims accrued at the same time. Boyd argues that the secrecy surrounding Alabama‘s execution protocol violates his due process rights because the secrecy denies him a fair opportunity to pursue his method-of-execution claim. Boyd‘s due process claim is therefore ancillary to his method-of-execution claim,7 and it did not accrue until the method-of-execution claim accrued. Boyd‘s due process right to be afforded “an opportunity ... to substantiate [his method-of-execution] claim before it is rejected” could not have been infringed before his method-of-execution claim even arose. See Ford v. Wainwright, 477 U.S. 399, 414, 106 S.Ct. 2595, 2604, 91 L.Ed.2d 335 (1986) (plurality opinion) (internal quotation marks omitted).
Even so, we must dismiss Boyd‘s due process claim since it is ancillary to, and thus shares the fate of, his method-of-execution claim.
III. CONCLUSION
Although Arthur compels us to affirm the dismissal of Anthony Boyd‘s method-of-execution and due process claims, I continue to believe Arthur was wrongly decided. This case highlights the tension between that decision and the Eighth Amendment. Boyd faces a controversial method of execution—midazolam-based lethal injection—that has resulted in botched and inhumane executions, and he has identified a viable execution alternative. Yet because of Arthur, Boyd cannot even access discovery.
I concur in the result only.
ROBERT MCBRIDE, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee. Also represented by THOMAS W. KRAUSE, JOSEPH MATAL, SCOTT WEIDENFELLER.
Before TARANTO, CHEN, and STOLL, Circuit Judges.
CHEN, Circuit Judge.
This appeal arises from two inter partes reexaminations and an ex parte reexamination of U.S. Patent No. 7,324,833 (the ‘833 patent), owned by Affinity Labs of Texas, LLC (Affinity). Richard King requested ex parte reexamination of all original claims of the ‘833 patent, based on multiple asserted grounds of unpatentability. Volkswagen Group of America, Inc. (Volkswagen) requested inter partes reexamination of all claims based on additional, different asserted grounds of unpatentability. And Apple Inc. (Apple) requested inter partes reexamination of all claims based on still different asserted grounds of unpatentability. The United States Patent and Trademark Office (PTO) granted all three requests and sua sponte merged these three reexaminations into a single proceeding.
Volkswagen subsequently received an adverse final judgment in a parallel district court proceeding, upholding the validity of claims 28 and 35 of Affinity‘s ‘833 patent. In response, Affinity petitioned the PTO to vacate the entire merged reexamination proceeding, arguing that the estoppel provision in pre-America Invents Act (AIA)
Affinity first argues that the PTO erred in maintaining the reexaminations in light of the final decision that Volkswagen failed to prove invalidity of two of the patent‘s claims, which were asserted in the copending litigation and, therefore, the Board‘s decisions in the reexaminations
BACKGROUND
I. The ‘833 Patent
The ‘833 patent relates to a system and method for connecting a portable media player, suсh as an MP3 player, to a different electronic device, such as a car audio system. ‘833 patent col. 3, l. 35–col. 4, l. 34. When the portable media player is connected to the different electronic device, the system provides the user with a graphical user interface on the display of that different electronic device. Id. col. 11, ll. 28-44. The user can then select and play music stored on the portable media player by pressing soft buttons displayed in the graphical user interface of the different electronic device. The ‘833 patent‘s claims are directed to systems and methods of displaying on the different electronic device a menu of titles associated with media files stored on the portable media player. Claim 1 is representative:
1. An audio system, comprising:
a portable electronic device having a display, a memory, and an audio file player;
a first portion of software saved аt the portable electronic device and configured to initiate a displaying of a graphical interface item on the display, the graphical interface item comprising a name associated with an audio file saved in the memory;
a mounting location on the portable electronic device that includes a physical interface configured to communicatively couple the portable electronic device to a different electronic device having an associated display; and
an other portion of software saved at the portable electronic device and configured to communicate a representation of the graphical interface item to the different electronic device via the physical interface to facilitate a displaying of the representation on the associated display, wherein the portable electronic device is configured to communicate interface information to the different electronic device in order to allow a user to view at least a partial representation of a graphical user interface that includes the graphical interface item on the associated display, wherein the graphical user interface comprises a plurality of preprogrammed soft buttons that are linked to respective audio information sources.
Id. col. 18, ll. 36–61.
II. Merger and Severance of the Reexaminations
Richard King filed a request for ex parte reexamination of all claims of the ‘833 patent on November 7, 2008. Volkswagen filed a request for inter partes reexamination of all claims of the ‘833 patent on September 22, 2009, soon after Affinity sued Volkswagen for infringement of the ‘833 patent, among other patents, in district court. Apple also filed a request for inter partes
During the merged reexamination proceeding, Apple and Affinity reached a settlement, Apple took a license to the ‘833 patent, and the parties filed a joint stipulation of dismissal in the co-pending district court case. Pursuant to the joint stipulation, the district court dismissed Affinity‘s infringement action with prejudice and Apple‘s invalidity counterclaims without prejudice. Apple then filed a notice of non-participation in the reexamination on October 3, 2011. The district court litigation between Affinity and Volkswagen, however, proceeded to trial and a jury returned a verdict that Volkswagen infringed claims 28 and 35 of the ‘833 patent and Volkswagen had not proven that the two asserted claims are invalid in view of prior art it presented at trial. Volkswagen initially appealed the verdict but dismissed its appeal following its own settlement with Affinity. Volkswagen filed a notice of non-participation in the reexamination on June 14, 2012.
Affinity then petitioned the PTO to terminate the entire merged proceedings under
III. Rejections and Appeal
The Examiner issued Right of Appeal Notices in both proceedings. In the severed Volkswagen reexamination, the Examiner rejected claims 1-5, 8-20, and 22-27 as unpatentable based on various prior art references and combinations. The Examiner stated that claims 28-35, 48, and 49 were no longer subject to reexamination; claims 6, 7, and 21 were patentable over the asserted art; and newly added claims 36-46 were objected to as dependent upon rejected base claims but would be allowed if rewritten in independent form. In the merged King/Apple reexamination proceeding, the Examiner rejected claims 1-27 and new claims 37-42, 45, and 46, added during reexamination. The Examiner stated that claims 28-35, 48, and 49, however, are patentable over the asserted prior art аnd claims 36, 43, 44, and 47 are objected to as dependent upon rejected base claims but would be allowed if rewritten in independent form.
Affinity appealed and the Board affirmed the Examiner‘s rejections in two final written decisions. In particular, the Board sustained the following grounds of rejection in the merged King/Apple reexamination:
- Claims 1-27, 39, and 45 as anticipated by U.S. Patent No. 6,671,567 (Dwyer), or obvious over Dwyer in combination
- Claims 1-26, 37-42, and 45-46 as obvious over U.S. Patent No. 6,694,200 (Naim) and U.S. Patent No. 6,728,531 (Lee), or obvious over Naim and Lee in combination with additional secondary references.2
The Board also sustained the following grounds of rejection in the severed Volkswagen reexamination:
- Claims 1-5, 8-11, 13–18, 20, 22-23, and 25-27 as anticipated by EP Patent App. No. EP0982732 (Hahm) or obvious over Hahm in combination with additional secondary references; and
- Claims 1-3, 5, 8-17, 19-20, 22-26, and 27 as anticipated by U.S. Patent No. 6,407,750 (Gioscia) or obvious over Gioscia in combination with additional seсondary references.
Discussion
We review the PTO‘s decisions under the standards set forth in the Administrative Procedure Act (APA),
support for the finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938).
I. Affinity‘s Petition to Terminate
We first address Affinity‘s argument that the PTO improperly maintained all three reexaminations over the estoppel provision of pre-AIA
In order to further encourage parties to use the PTO‘s patent reexamination procedure, Congress enacted in 1999 inter partes reexamination “as an option to the existing ex parte reexamination proceed-
In addition to allowing requester participation in inter partes reexamination, Congress enacted measures in the inter partes reexamination statute to “prevent abusive reexamination requests, including broad estoppel provisions.” 145 Cong. Rec. 26,984 (1999) (statement of Sen. Hatch). Those provisions are reflected, in part, in
proving the invalidity of any patent claim in suit.” The statute provides in pertinent part:
Once a final decision has been entered against a party in a civil action ... that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexаmination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office....
A few notable features of the inter partes reexamination statutory estoppel provision stand out from its plain language: (1) it applies to the party in the civil action that loses its validity attack against “any patent claim” as well as the party‘s privies; (2) it applies to validity issues raised in the civil action or that could have been raised in that action; (3) unlike section 317(a), it speaks in terms of any “patent claim,” as opposed to the “patent;” (4) it prohibits the losing party and its privies from requesting an inter partes reexamination “of any such patent claim;” and (5) “on the basis of such issues,” it prohibits the PTO from “maintain[ing]”
Affinity urges that we order the PTO to terminate all three reexamination proceedings—even though they involve several claims beyond the litigated claims 28 and 35, the other inter partes reexamination requester had no involvement or relationship to that prior litigаtion, and the third proceeding was an ex parte reexamination—based on its reading of section 317(b). The PTO offers a counter reading of this statutory estoppel provision, which follows its established practice set forth in Manual of Patent Examining Procedure (MPEP) § 2686.04(V)(A).
“Our first step in interpreting a statute is to determine whether the language at issue has a plain and unambiguous meaning with regard to the particular dispute in the case. Our inquiry must cease if the statutory language is unambiguous and the statutory scheme is coherent and consistent.” Pennzoil-Quaker State Co. v. United States, 511 F.3d 1365, 1373 (Fed. Cir. 2008) (quoting Robinson v. Shell Oil Co., 519 U.S. 337, 340, 117 S.Ct. 843, 136 L.Ed.2d 808 (1997)). “Absent a clearly expressed legislative intention to the contrary, [the statute‘s plain] language must ordinarily be regarded as conclusive.” Wyeth v. Kappos, 591 F.3d 1364, 1369 (Fed. Cir. 2010) (quoting Consumer Prod. Safety Comm‘n v. GTE Sylvania, Inc., 447 U.S. 102, 108, 100 S.Ct. 2051, 64 L.Ed.2d 766 (1980)) (alteration in original). Moreover, “statutory language cannot be construed in a vacuum. It is a fundamental canon of statutory construction that the words of a statute must be read in their context and with a view to their place in the overall statutory scheme.” Davis v. Mich. Dep‘t. of Treasury, 489 U.S. 803, 809, 109 S.Ct. 1500, 103 L.Ed.2d 891 (1989).
The crux of Affinity‘s argumеnt is that the statute operates differently and has a much broader impact against a losing party‘s active, pending inter partes reexamination compared to a losing party‘s request for an inter partes reexamination. According to Affinity, if a patent challenger conclusively loses its validity challenge in court against, say, claims 1-5 of a 20-claim patent, section 317(b) prevents that party from requesting an inter partes reexamination on just claims 1-5 (and not claims 6-20) of that patent on issues that had been raised or could have been raised in the civil action. No one disagrees there. But, in Affinity‘s view, section 317(b) requires termination of a pending inter partes reexamination that had been requested by the losing party, regardless of which claims of the patent are being reexamined in the proceeding: it could be claims 1-10, or 1-20, or even 6-20. For Affinity then, the scope of the statutory estoppel is claim-specific as to requests for inter partes reexamination, but is purely patent-as-a-whole-driven for maintaining a pending inter partes reexamination. Wе disagree with Affinity‘s proposed interpretation and instead see the estoppel provision‘s claim-based approach applying in the same way to both a request for inter partes reexamination and the maintenance of a pending inter partes reexamination.
The structure of pre-AIA section 317(b) contemplates a parallel and consistent approach to limiting a party‘s ability to request a reexamination and to maintain a reexamination once a final decision has been entered against the party in a civil action. The statute first explains that the party may not request reexamination on “any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action.” This language limits the scope of estoppel in two ways: (i) to the specific claims that were actually at issue in the
Moreover, the inter partes reexamination statutory scheme consistently reflects a careful, еxpress focus on implementing this regime on a claim-by-claim basis. Section 311 requires an inter partes reexamination requester to “set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.”
In other words, the order to conduct an inter partes reexamination is to resolve the patentability questions of particular claims specifically raised by a requester—not an entire patent—once a substantial new question of patentability is raised for those selected patent claims. Had Congress wanted the inter partes reexamination to extend to all claims of a patent, regardless of how many claims were requested for review, it would have left out the final phrase “resolution of the question” and ended the provision with “an order for inter partes reexamination of the patent.”
In addition, this claim-by-claim focus is also reflected in the converse estoppel provision that prohibits a challenge to a patent claim which has been finally determined to be valid in an inter partes reexamination proceeding. Section 315 provides:
A third-party requester whose request for an inter partes reexamination results in an order under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.
Upon review of the text, structure, and history of the inter partes reexamination
We also find no basis in the statute for Affinity‘s argument that the final decision in the Volkswagen litigation should have preclusive effect on the reexaminations re-
quested by King or Apple. By its plain and unambiguous terms, pre-AIA section 317(b) extends only to inter partes reexaminations—not ex parte reexaminations. The estoppel effect of the statute, therefore, has no bearing on the ex parte King reexamination. Moreover, the statute also imposes the aforementioned limitations only on a requester that was a party to the civil action or its privies. Because Apple was neither a party to the Volkswagen litigation nor was there any evidence Apple was Volkswagen‘s privy, we also find no error in the PTO‘s decision not to terminate the inter partes reexamination requested by Apple.
Affinity‘s invocation of the general policy goal of preventing abusive reexamination practices cannot override the statute. “It is a bedrock canon of statutory construction that our judicial inquiry ends where statutory language is plain and unambiguous.” Pfizer, Inc. v. Lee, 811 F.3d 466, 471 (Fed. Cir. 2016) (quoting White v. United States, 543 F.3d 1330, 1337 (Fed. Cir. 2008)). “[O]nly a ‘most extraordinary showing of contrary intentions’ by Congress justifies a departure from the plain language of a statute.” Wyeth, 591 F.3d at 1371 (quoting Garcia v. United States, 469 U.S. 70, 75, 105 S.Ct. 479, 83 L.Ed.2d 472 (1984)). The plain language of the statute does nоt permit extending the reach of estoppel as far as Affinity suggests. Moreover, we have reviewed the legislative history and find no such extraordinary showing sufficient to overcome the statute‘s plain language.4
In sum, Affinity has failed to demonstrate that the PTO‘s denial of its petitions
II. Unpatentability of the ‘833 Patent
We next address Affinity‘s arguments that the Board erred in upholding the Examiner‘s unpatentability rejections in both decisions. We conclude that substantial evidence supports the Board‘s unpatentability findings as to all challenged claims in the merged King/Apple reexamination. Because the claims at issue in the Volkswagen reexamination comprise only a subset of the claims in the King/Apple reexamination, we do not address the alternative grounds of unpatentability at issue in the Volkswagen reexamination appeal.
A. Anticipation by Dwyer
Affinity appeals the Board‘s decision in the King/Apple reexamination that the statutory estoppel applied against the requester.
claims 1-27, 39, and 45 are anticipated by Dwyer or obvious over Dwyer in view of additional secondary references. Affinity argues specifically that Dwyer does not disclose (i) a portable electronic device configured to display a graphical interface item, having “a name associated with an audio file saved in memory,” as required by independent claim 1; or (ii) “a plurality of preprogrammed soft buttons that are linked to respective audio information sources,” as required by independent claims 1 and 17.6 We find both of Affinity‘s arguments unpersuasive.
A claim is unpatentable as anticipated “if each and every limitation is found either expressly or inherently in a single prior art reference.” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (citation omitted). Anticipation is a question of fact we review for substantial evidence. REG Synthetic Fuels, LLC v. Neste Oil Oyj, 841 F.3d 954, 958 (Fed. Cir. 2016).
Dwyer‘s recorder stores digital audio files and includes a touch screen that “provides information to the user of the recorder, and through which the user inputs information.” Id. col. 4, ll. 41-42. Dwyer discloses a variety of touch screen functions and notes that “it is contemplated to allow the user to control recording, editing and playback functions via the touch screen, which also may be used to navigate among voice files and to select an existing voice file for playback and/or additional recording.” Id. col. 4, l. 66-col. 5, l. 3; col. 6, ll. 10-12. Dwyer also discloses that “[r]ecorded with, or otherwise associated with, each voice file is header data,” id. col. 5, ll. 16-17, as shown in Figure 5:
That header information includes, specifically, “title or other identifying data 116, which indicates a title or other name used to identify the corresponding voice file.” Id. col. 5, ll. 31-32.
Given the disclosure above, the Board was reasonable to conclude that Dwyer‘s portable electronic device necessarily displays name information on the graphical interface to allow the user to meaningfully navigate the digital files stored on the device. Substantial evidence supports the Board‘s finding that this limitation is disclosed by Dwyer.
Dwyer also teaches communicating information from the portable recorder device to the user‘s personal computer. Specifically, the Dwyer system contemplates that the recorder “uploads to the personal computer voice file identification data corresponding to all of the voice files (i.e. the portion of the header data indicated as ‘title/I.D.’ data 116 and discussed above in connection with FIG. 5).” Id. col. 6, ll. 24–28. That header data is used to create a graphical user interface display on the user‘s personal computer, indicative of the files stored in the recorder. In this way, the user can view and manipulate information stored on the recorder via the graphical user interface displayed on the personal computer.
Dwyer specifically discloses that information, including a name, associated with audio files is displayed in the graphical user interface for selection and playback by the user. Id. col. 6, ll. 24–36. Figure 8 depicts the information presented through the computer screen‘s display:
“Field 218 allows the user to focus in on particular voice files in the recorder,” id. col. 8, ll. 34-35, “[i]cons 220 in field 218 are each respectively indicative of a voice file stored in the portable recorder,” id. col. 8, ll. 35-37, and “[n]ame information indicated at 222 corresponds to the header data component 116 (FIG. 5) for the voice files, which was uploaded to the PC....” Id. col. 8, ll. 37-39. When the user attempts to access information stored in the portable recorder via the graphical user interface, Dwyer explains, “the specific file may be selected, for example, by designating the corresponding icon in the field 218 of the display of FIG. 8.” Id. col. 9, ll. 6-9.
Based on this disclosure, the Board‘s finding that Dwyer teaches soft buttons (comprised of the icon 220 and name 222 information found in field 218) linked to respective audio information sources (as stored in the portable digital recorder) is eminently reasonable. We, therefore, conclude that substantial evidence supports the Board‘s finding that claims 1-27, 39, and 45 are unpatentable based on the asserted Dwyer rejections.
B. Obviousness Based on Naim and Lee
Affinity also appeals the Board‘s obviousness conclusion as to claims 1-26, 37-42, and 45-46 in view of the combination of Naim and Lee. Affinity argues that neither Naim nor Lee discloses (i) communicating a graphical item comprising a name from a portable electronic device to a different electronic device, as required by claims 1 and 17; or (ii) a portable electronic device with a mounting location that includes a physical interface, as required by claims 1, 23, and 24.7 Affinity further argues that the Board improperly rejected its objective indicia of nonobviousness evidence. We disagree with Affinity‘s challenges to the disclosures of Naim and Lee and conclude that substantial evidence supports the Board‘s decision not to give dispositive weight to Affinity‘s objective indicia argument.
Naim relates to the field of portable digital devices and specifically teaches a system where recorded audio files can be transferred from a portable electronic device to a different electronic device. Naim col. 11, ll. 17-22. Figure 1B depicts Naim‘s system as follows:
Naim‘s portable device comprises two mаin parts, the portable player 2 and the hard drive 3. Id. col. 5, ll. 4-5. Naim explains that “control buttons 15 on the portable device 1 allow for operation of the player 2 and its interface with the hard disk 3 via an interface 9, which can be a physical hard connector or a wireless interface.” Id. col. 5, ll. 21-24. In addition, the portable device “can also have an interface 10 to allow data-file download/upload from an external communications device 11, such as a PC, to the portable device hard disk 3.” Id. col. 5, ll. 24-27.
Lee discloses an Internet radio system that can be incorporated into a car. The Lee system uses a multimedia device with a graphical user interface in an automobile that can interact with portable devices such as notebook computers, cellular phones, and MP3 players. Lee col. 5, ll. 47-65; col. 7, ll. 55-61; col. 8, ll. 47-64. As depicted in Figure 2 below, the Lee multimedia device includes a display to present audio information to the user via the graphical user interface.
The display includes soft buttons that a user can manipulate to play audio files stored on a portable device. Id. col. 10, ll. 23-27.
Affinity first contends that the Board erred in concluding Naim discloses a portable electronic device graphical interface item comprising a name because the only transfer of data in Naim from the portable device to a PC “is either ... statistical information or voice recorded content,” and “[t]his information need not include identifying information.” Affinity Opening Br. 45. We disagree. First, Naim contemplates bi-directional transfer of information between the two devices via interface port 10. Moreover, “[i]f the portable handheld audio device is used as a recorder, this port can be used to upload the recorded content to the computer.” Id. col. 11, ll. 20-22. That uploaded content is stored in memory as a digital data file and would necessarily include identifying information such as file name. From this, it was reasonable for the Board to find that Naim discloses communicating the claimed information from the portable electronic device 2 to the external communications device, PC 11. We therefore conclude substantial evidence supports the Board‘s finding that this limitation is disclosed by Naim.
We next address Affinity‘s argument that the Board erred in finding that Lee teaches a “mounting location ... that includes a physical interface.” Affinity contends that, properly construed, this phrase excludes wireless coupling. And, according to Affinity, Lee teaches only wireless communication. We, like the Board, reject Affinity‘s narrow construction. The Board adopted the Examiner‘s interpretation of the claimed physical interface to comprise any circuitry or the like on or within a deviсe that allows it to communicate wirelessly or via a wire. It also endorsed the Examiner‘s construction of “mounting location” as any location on or within the portable device in which the physical interface is installed or mounted. We agree with the Examiner that neither the express language of the claim nor the specifi-
Finally, we are not persuaded that the Board erred in its analysis of Affinity‘s proffered objective indicia of nonobviousness. Affinity pointed to (i) a $25 billion industry developed around in-vehicle device integration, which it says is covered by the claims of the ‘833 patent; and (ii) Affinity‘s licensing of the ‘833 patent and its siblings to a number of entities in excess of $50 million. Upon review, however, we agree with the Examiner that this evidence, at best, establishes a tenuous connection with the claimed invention.
Evidence of commercial success is only relevant to the obviousness inquiry “if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006). There is no nexus unless the evidence presented is “reasonably commensurate with the scope of the claims.” See Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013). Here, the Board correctly recognized that Affinity provided no explanation or analysis that corroborates the relationship between the claims of the ‘833 patent and the market for in-vehicle device integration technology generally. Affinity‘s argument that the claims of the ‘833 patent are directed to the general field of device connectivity and interoperability, without more, does not establish a meaningful connection with the asserted commercial success. We, therefore, see no error in the Board‘s decision that this evidence of nonobviousness was entitled to little weight. See Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996) (“It is within the province of the fact-finder to resolve these factual disputes regarding whether a nexus exists between commercial success of the product and its patented features, and to determine the probative value of ... evidence of secondary considerations.... “).
Moreover, the mere fact of licensing alone cannot be considered strong evidence of nonobviousness if it cannot also be shown that the licensees did so out of respect for the patent rather than to avoid the expense of litigation. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004) (“Our cases specifically require affirmative evidence of nexus where the evidence of commercial success presented is a license, because it is often ‘cheaper to take licenses than to defend infringement suits.’ “). To support its licensing argument, Affinity did not enter the actual licenses into the record but, rather, submitted the unsupported declaration of Affinity‘s President that it “has generated revenues of over $50,000,000 for licensing the ‘833 patent and related patents.” J.A. 10488 (emphasis added). Affinity did not explain what per-
Conclusion
For the foregoing reasons, we affirm the -4281 Board Decision that claims 1-27, 37-42, and 45-46 are unpatentable. Because claim 36 was rejected by the Examiner and Affinity has made no independent argument that claim 36 was improperly rejected apart from those arguments made with respect to the independent claims, we remand to the Board for the limited purpose of correcting the record to reflect that claim 36 is rejected as unpatentable before issuing a reexamination certificate. Because we affirm the -4281 Board Decision, we need not resolve Affinity‘s appeal relating to the -6122 Board Decision upholding the unpatentability of claims 1-5, 8-20, and 22-27, and dismiss that appeal as moot.
AFFIRMED-IN-PART, REMANDED-IN-PART, DISMISSED-IN-PART
Costs
No costs.