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In re Affinity Labs of Texas, LLC

Dismissal of Invalidity Counterclaims Without Prejudice Does Not Invoke § 317(b) Estoppel Against IPRx

In re Affinity Labs of Texas, LLC, 2017 U.S. App. LEXIS 7982 (Fed. Cir. May 5, 2017) (Taranto, CHEN, Stoll) (PTAB) (3 of 5 stars)

Fed Cir affirms IPRx determination of unpatentability. The PTO did not err in denying Affinity’s motion to have the IPRx terminated after Affinity settled a co-pending district court litigation with requestor Apple. § 317(b) only imposes an estoppel against maintenance of IPRx proceedings following a “final decision” in civil litigation as to patentability. Because the district court litigation never reached the merits of Apple’s invalidity counterclaims, and because the district court dismissed those counterclaims without prejudice to Apple re-filing them, there was no “final decision” suitable to invoke § 317(b).

As to the validity analysis, the opinion rejects Affinity’s claim interpretation as unduly narrow. Affinity argued that claim steps of “sending” certain content to two separate computers must occur without any intervening step after “receiving” a request. The opinion reasons that this was inconsistent with the claim language, which set the two steps up as separate steps—i.e., not a single step. The opinion also notes that the claim preamble used the term “comprising” in setting forth the claim.

KEYWORDS: INTER PARTES REEXAMINATION; ADMINISTRATIVE PROCEDURE ACT; ESTOPPEL