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) 35 U.S.C. § 317(b)1 extends to all parties, not just Volkswagen, and all claims challenged in the three reexaminations, not just litigated claims 28 and 35. The PTO denied Affinity’s termination request, but it severed the Volkswagen reexamination from the merged proceeding and held that no rejection could be maintained in that reexamination as to the claims at issue in the district court action. The Examiner then evaluated the Volkswagen reexamination separately from the merged King/Apple reexamination and ultimately issued a Right of Appeal Notice in each proceeding, rejecting numerous claims of the ’833 patent as unpatentable. The Patent Trial and Appeal Board (Board) affirmed the Examiner’s rejections. See Apple Inc. v. Affinity Labs of Tex., LLC, No. 2015-004281, Reexamination Nos. 95/001,264 and 90/010,333, 2015 WL 4038964, at *1 (P.T.A.B. June 30, 2015) (-4281 Board Decision); Apple Inc. v. Affinity Labs of Tex., LLC, No. 2015-006122, Reexamination No. 95/001,223, 2015 WL 5092841, at *1 (P.T.A.B. Aug. 26, 2015) (-6122 Board Decision). Affinity appealed to this court and the Director of the United States Patent and Trademark Office (Director) intervened. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
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 co-pending litigation and, therefore, the Board’s decisions in the reexaminations should be reversed pursuant to the section 317(b) estoppel provision. Affinity also asserts that, assuming the reexaminations were properly maintained, the Board’s decisions are based on misreadings of the asserted prior art and a misevaluation of Affinity’s objective indicia evidence of nonobviousness. Because the plain language of pre-AIA section 317(b) precludes Affinity’s estoppel argument and because we see no error in the -4281 Board Decision upholding the Examiner’s findings of unpatentability as to all claims at issue, we affirm. We, therefore, dismiss as moot Affinity’s appeal of the -6122 Board Decision upholding the unpatentability of a subset of claims affirmed as unpatentable in the -4281 Board Decision.
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