May 5, 2017

Semicolons Strongly Indicate Each Step is Separate and Distinct; Confuse Most Non-Patent Lawyers

In In re Affinity Labs of Texas, LLC, [2016-1173] (May 5, 2017), the Federal Circuit affirmed the Boardā€™s decision that Ā§317(b)Ā did not bar the reexamination and that the reexamined claims were invalid.

Affinity sued Apple for infringement of U.S. Patent No.Ā 7,440,772, and Apple requested reexamination of the ā€˜772 Patent. Ā Apple and Affinity settled the lawsuit and filed a joint stipulation of dismissal. Ā Apple also filed a notice of non-participation in the reexamination, and Affinity petitioned to terminate the reexamination under 35 U.S.C. Ā§ 317(b), which prohibits the USPTO from maintaining anĀ Inter Partes reexamination after the party who requestedĀ the reexamination has received a final decision against itĀ in a civil action. Ā The USPTO denied Affinityā€™s petition becauseĀ because the district courtā€™s dismissal,Ā without prejudice did not meet section 317(b)ā€™s required condition for terminatingĀ the reexamination. Ā The reexamination resulted in invalidation of all of the claims, which was affirmed by the PTAB.

The claims included a dual download feature, inter alia, requiring:

in response to receiving the request, makingĀ a first version of the piece of selectableĀ content available for downloading to theĀ wireless user device and a second versionĀ of the piece of selectable content availableĀ for downloading to a personal computer ofĀ the user, wherein the first version has theĀ specific format and the second version hasĀ a different format playable by the personalĀ computer;Ā sending the first version of the piece of selectableĀ content to the wireless user device;Ā andĀ sending the second version of the piece ofĀ selectable content to the personal computer.

Affinity argued that the two sending steps must occur automatically, without intervening steps, after the ā€œin response toā€ language. Ā The Federal Circuit disagreed, notingĀ that each of the five steps of method claim 4 ā€” including the three steps of the dual download feature ā€” are offset by semicolons. Ā The Federal Circuit said: ā€œThis punctuation choice strongly indicates that each stepĀ is separate and distinct.ā€Ā  It would, therefore, be reasonableĀ to conclude the fourth and fifth steps ā€” the sendingĀ steps ā€” are not tied to the ā€œmaking . . . availableā€ step and not performed ā€œin response toā€ the same request found inĀ the ā€œmaking . . . availableā€ step, as Affinity argued. Ā The Federal Circuit also found that while portions of specification were consistent with automatically downloading, they certain did not require it, and in fact some embodiments did not have automatic downloads. Ā The Federal Circuit thus affirmed the broad claim construction by the Board, and the invalidation of those broad claims.

Because the Federal Circuit agreed that the estoppel provision of Ā§ 317(b)Ā did not prohibit the PTO from maintaining the reexaminationĀ of the ā€™772 Patentā€™s claims, and the Boardā€™s construction of the claims was consistent with the broadest reasonable interpretation, the Federal Circuit affirmed theĀ Boardā€™s decision.