United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: AFFINITY LABS OF TEXAS, LLC,

Appellant

______________________ 

2016-1173

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/001,266.

______________________ 

Decided: May 5, 2017

______________________ 

WILLIAM MANSKE, Robins Kaplan LLP, Minneapolis, 

MN, argued for appellant. Also represented by RYAN 

MICHAEL SCHULTZ. 

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 the inter partes reexamination of all claims, claims 1–42, of U.S. Patent No. 

7,440,772 (the ’772 patent), owned by Affinity Labs of 
2 IN RE: AFFINITY LABS OF TEXAS, LLC

Texas, LLC (Affinity). Apple Inc. (Apple) requested the 

present reexamination after Affinity brought an action 

against it in district court, asserting infringement of 

claims 1, 4, and 11–13 of the ’772 patent. While the 

reexamination was pending, the parties settled their 

dispute and filed a joint stipulation of dismissal with the 

district court. Affinity’s infringement action was dismissed with prejudice and Apple’s invalidity counterclaims were dismissed without prejudice. Apple also filed 

a notice of non-participation in the reexamination. Affinity petitioned the United States Patent and Trademark 

Office (PTO) to terminate the patent reexamination that 

had been requested by Apple in view of the dismissal of 

Apple’s district court counterclaims pursuant to preAmerica Invents Act (AIA) 35 U.S.C. § 317(b).1 That 

statutory section prohibits the PTO from maintaining an 

inter partes reexamination after the party who requested 

the reexamination has received a final decision against it 

in a civil action concluding “that the party has not sustained its burden of proving the invalidity of any patent 

claim in suit.”2 The PTO dismissed Affinity’s termination 

 

1 When Congress enacted the AIA, it replaced the 

extant statutory provisions for inter partes reexamination 

with provisions for a new type of proceeding, inter partes 

review. In doing so, Congress amended the provisions of 

35 U.S.C. § 317 to apply only to inter partes review proceedings, which, by definition, are filed post-AIA. Congress also specified that the pre-AIA provisions of the 

inter partes reexamination statute remain applicable to 

inter partes reexamination proceedings.

2 As we explain in In re Affinity Labs of Tex., LLC, 

Appeal Nos. 2016-1092, -1172, also decided today, the 

scope of section 317(b)’s estoppel as it applies to maintaining a pending inter partes reexamination focuses on a 

comparison of the claims litigated with the claims in the 

reexamination, rather than a patent-based approach.
IN RE: AFFINITY LABS OF TEXAS, LLC 3

request because it did not view the district court’s dismissal, without prejudice, of Apple’s invalidity counterclaims 

as meeting section 317(b)’s required condition for terminating the reexamination. The Examiner ultimately 

rejected all of the patent’s claims,3 and Affinity appealed 

to the Patent Trial and Appeal Board (Board), which 

upheld the Examiner’s rejection.

Affinity now appeals the Board’s decision. The Director of the United States Patent and Trademark Office 

(Director) has intervened. We have jurisdiction under 28 

U.S.C. § 1295(a)(4)(A) to review the Board’s decision. 

Affinity argues that the PTO improperly maintained the 

reexamination in view of § 317(b) and, on that basis, the 

Board’s decision upholding the rejection of the ’772 patent’s claims should be reversed. Affinity also argues that 

the Board’s finding that all claims are unpatentable is 

based on an improper claim construction of three related 

limitations, the so-called dual download feature.

Because we conclude the estoppel provision of § 317(b) 

did not prohibit the PTO from maintaining the reexamination of the ’772 patent’s claims and the Board’s construction of the dual download feature is consistent with 

the broadest reasonable interpretation, we affirm the 

Board’s decision. 

DISCUSSION

I. 35 U.S.C. § 317(b)

We first address Affinity’s argument that the reexamination was improperly maintained over the estoppel 

provision of pre-AIA 35 U.S.C. § 317(b). 

 

3 Affinity canceled claim 1 during the reexamination and the Board rejected all remaining claims, claims 

2–42.
4 IN RE: AFFINITY LABS OF TEXAS, LLC

Pursuant to the joint stipulation filed by Affinity and 

Apple in the concurrent district court litigation, the 

district court dismissed Apple’s invalidity counterclaims 

without prejudice. The estoppel provision of section 

317(b), however, is expressly conditioned upon the entry 

of a “final decision” “that the party has not sustained its 

burden of proving the invalidity of any patent claim in 

suit.” Because Affinity presents no evidence of a final

decision that Apple has not sustained its burden of proving invalidity, we reject its argument based on section 

317(b).

Under the plain language of section 317(b), the district court’s dismissal without prejudice of Apple’s invalidity counterclaims does not reflect a “final decision” that 

Apple failed to “sustain[] its burden of proving the invalidity” of the asserted claims. The dismissal without 

prejudice of Apple’s claims neither reflects an assessment

by the district court of Apple’s invalidity challenge nor a 

concession by Apple that it did not or could not meet its 

burden of proving the asserted claims’ invalidity. Nor 

does the dismissal without prejudice prevent Apple from 

again challenging the validity of the ’772 patent’s claims

in subsequent litigation. See, e.g., Jet, Inc. v. Sewage 

Aeration Sys., 223 F.3d 1360, 1364 (Fed. Cir. 2000) (“Dismissal without prejudice indicates that judgment is not on 

the merits and will have no preclusive effect.”); Rivera v. 

PNS Stores, Inc., 647 F.3d 188, 194 (5th Cir. 2011) 

(“‘Without prejudice’ indicates that the suit is dismissed 

without a decision on the merits and is not conclusive of 

the rights of the parties.”) (citation omitted). The estoppel 

provision of pre-AIA section 317(b) therefore did not serve 

as a bar to maintain the inter partes reexamination of the 

’772 patent’s claims. 

II. The Dual Download Feature

We next address the Board’s decision upholding the 

rejection of the ’772 patent’s claims as unpatentable. 
IN RE: AFFINITY LABS OF TEXAS, LLC 5

The ’772 patent relates to an audio download method 

whereby content (e.g., a music file) is made available for 

download to different devices (e.g., an mp3 player and a 

personal computer). ’772 patent, Abstract; J.A. 2867. In 

particular, the ’772 patent discloses a graphical user 

interface that allows a user to search for and select audio 

files and to also select multiple destination devices to 

which the selected audio files will be sent. Id. col. 10, ll. 

30–50; J.A. 2882. According to Affinity, one of the key 

features of the ’772 patent is the so-called dual download 

feature, whereby a user makes a single request to download content via the user interface of a first device and the 

selected content is downloaded to the first device in a 

format suitable to that device and also to a second device

in a format suitable to that second device.

Independent claim 4, as amended during reexamination, is representative4 of the ’772 patent’s claimed invention:

 

4 During the reexamination, both the Examiner and 

the Board treated claim 4 as representative of all challenged claims. Affinity raised no objection to that choice 

and on appeal to the Board argued patentability only in 

the context of claim 4. Based on this record, we likewise 

treat claim 4 as representative of all challenged claims. 

See 37 C.F.R. § 41.37(c)(1)(iv) (2012) (“For each ground of 

rejection applying to two or more claims, the claims may 

be argued . . . as a group (all claims subject to the ground 

of rejection stand or fall together) . . . .”); In re McDaniel, 

293 F.3d 1379, 1383 (Fed. Cir. 2002) (noting “the Board is 

free to select a single claim from each group of claims 

subject to a common ground of rejection as representative 

of all claims in that group and to decide the appeal of that 

rejection based solely on the selected representative 

claim” in the absence of a clear statement asserting 

separate patentability of the claims).
6 IN RE: AFFINITY LABS OF TEXAS, LLC

4. A content delivery method comprising: 

maintaining a user interface page that is 

accessible to a wireless user device that 

has a player configured to execute a specific format of content file, the user interface page configured to present a user 

with a first graphical element associated 

with a piece of selectable content;

recognizing receipt of a request for the 

piece of selectable content from the wireless user device; 

in response to receiving the request, making a first version of the piece of selectable 

content available for downloading to the 

wireless user device and a second version 

of the piece of selectable content available 

for downloading to a personal computer of 

the user, wherein the first version has the 

specific format and the second version has 

a different format playable by the personal 

computer; 

sending the first version of the piece of selectable content to the wireless user device; and 

sending the second version of the piece of 

selectable content to the personal computer.

’722 patent, claim 4 as amended; J.A. 19. 

The parties agree that the dual download feature is 

embodied in the last three claim elements of claim 4, 

beginning with “in response to receiving the request.” 

Central to the parties’ dispute, however, is whether the 

“in response to” language modifies only the immediately 

following “making . . . available” step or also modifies (and 
IN RE: AFFINITY LABS OF TEXAS, LLC 7

thus triggers) the two following “sending” steps. During 

reexamination, the Examiner found that “[t]he claim 

merely requires that the selectable content be ‘made 

available’ to both devices in response to the request, but it 

does not require that the content can be sent to both 

devices in response to the request.” J.A. 2213. In other 

words, the Examiner explained, “the two claimed ‘sending’ 

steps are not specified as being ‘in response to receiving 

the request.’” Id. The Board explicitly adopted the Examiner’s construction and found that “one of the downloads 

may be made following a subsequent request.” J.A. 7. So 

construed, the Board concluded that all claims are unpatentable as obvious over the asserted prior art.

Affinity argues that the steps of “sending” the desired 

content to two different devices must automatically occur, 

without any intervening step, “in response to receiving 

the request” for that content. According to Affinity, 

support for this connected functionality is supported by 

the specification, which states:

[A] user may select a plurality of devices as destination devices for receiving downloads of the selected audio information. For example, the user 

may want to download the information to a home 

stereo system, a PDA device, and an automobile 

stereo. As such, the selected information may be 

communicated to more than one destination device. In addition, the format of the download may 

match or conform to the selected destination device(s).

’772 patent col. 16, ll. 4–11; J.A. 2885. When read in view 

of the claim’s overall structure and the specification, 

Affinity argues, the “making . . . available” and “sending” 

steps are necessarily tied together and must be performed 

following a single request.

During reexamination, the Board must construe 

claims giving them their broadest reasonable interpreta-
8 IN RE: AFFINITY LABS OF TEXAS, LLC

tion consistent with the specification. In re Rambus, Inc., 

753 F.3d 1253, 1255 (Fed. Cir. 2014). We review the 

Board’s ultimate construction de novo and any underlying 

factual determinations for substantial evidence. Microsoft 

Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 

2015). When findings of fact extrinsic to the patent are 

not at issue, as here, we review de novo the Board’s 

determination of the broadest reasonable interpretation of 

the claims. See Cuozzo Speed Techs., LLC v. Lee, –––U.S. 

––––, 136 S. Ct. 2131, 2142 (2016); Ruckus Wireless, Inc. 

v. Innovative Wireless Sols., LLC, 824 F.3d 999, 1002 

(Fed. Cir. 2016). 

We have considered Affinity’s argument and disagree 

with its narrow interpretation of the dual download 

feature. The plain language of claim 4 does not require 

the selected content to be sent to the two devices in response to the same request found in the preceding “making . . . available” step. We note that each of the five steps 

of method claim 4—including the three steps of the socalled dual download feature—are offset by semicolons. 

This punctuation choice strongly indicates that each step 

is separate and distinct. It would, therefore, be reasonable to conclude the fourth and fifth steps—the sending 

steps—are not tied to the “making . . . available” step and 

not performed “in response to” the same request found in 

the “making . . . available” step, as Affinity suggests.

Moreover, claim 4 uses the transition “comprising,” 

indicating that the claimed method is open-ended and 

allows for additional steps. See Vivid Techs., Inc. v. Am. 

Sci. & Eng’g, Inc., 200 F.3d 795, 811 (Fed. Cir. 1999) 

(noting that the word “comprising” is “generally understood to signify that the claims do not exclude the presence in the accused apparatus or method of factors in 

addition to those explicitly recited”). This language choice 

signals that the breadth of claim 4 allows for additional 

steps interleaved between the recited steps. Therefore, it 

was reasonable for the Board to conclude that claim 4 
IN RE: AFFINITY LABS OF TEXAS, LLC 9

does not prohibit additional, intervening steps, between 

the “making . . . available” step and the “sending” steps—

such as an additional request to send the requested 

content to a specific device.

In addition, we disagree with Affinity that the specification supports only its understanding of the claim. The 

passage on which Affinity relies refers to “selecting” 

destination devices for possible downloads and provides 

only that, in one contemplated embodiment, the requested 

information “may be communicated to more than one 

destination device.” ’772 patent col. 16, ll. 8–9 (emphasis 

added). Moreover, the passage concludes that the format 

of the download “may match or conform to the selected 

destination device(s).” Id. col. 16, ll. 9–11. This passage

is indeed consistent with the notion that the selected 

content may be downloaded to multiple destination devices in the format appropriate to each device. However, it is 

hardly a command that the requested content must be 

simultaneously and automatically downloaded to all 

selected destination devices based on a single request, 

without any subsequent action by the user. The specification elsewhere in fact contemplates embodiments to the 

contrary: “In another embodiment, homepage 401 may 

allow a user to select when to download the information to 

an electronic device.” Id. col. 11, ll. 25–27. Thus, the 

specification also supports the reasonableness of the 

Board’s construction.

We conclude that the Board’s claim construction is 

correct, particularly under the broadest reasonable interpretation rule. Affinity concedes that if this court affirms 

the Board’s claim construction, the challenged claims 

would be unpatentable based on the grounds asserted in 

the reexamination. See Oral Arg. at 9:50–10:45, 

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20

16-1173.mp3. We therefore affirm the Board’s decision

that all claims of the ’772 patent are unpatentable. 
10 IN RE: AFFINITY LABS OF TEXAS, LLC

CONCLUSION

For the foregoing reasons, the Board’s decision is

AFFIRMED

COSTS

No costs.