{"id":1536,"date":"2017-05-05T12:59:49","date_gmt":"2017-05-05T16:59:49","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1536"},"modified":"2017-05-06T10:51:56","modified_gmt":"2017-05-06T14:51:56","slug":"semicolons-strongly-indicate-each-step-is-separate-and-distinct-confuse-most-non-patent-lawyers","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1536","title":{"rendered":"Semicolons Strongly Indicate Each Step is Separate and Distinct; Confuse Most Non-Patent Lawyers"},"content":{"rendered":"

In In re Affinity Labs of Texas, LLC<\/a>, [2016-1173] (May 5, 2017), the Federal Circuit affirmed the Board’s decision that \u00a7317(b)\u00a0did not bar the reexamination, and that the reexamined claims were in valid.<\/p>\n

Affinity sued Apple for infringement of U.S. Patent No.\u00a07,440,772, and Apple requested reexamination of the ‘772 Patent. \u00a0Apple and Affinity settled the lawsuit and filed a joint stipulation of dismissal. \u00a0Apple also filed a notice of non-participation in the reexamination, and Affinity petitioned to terminate the reexamination under 35 U.S.C. \u00a7 317(b), whihc prohibits the USPTO from maintaining an\u00a0inter partes reexamination after the party who requested\u00a0the reexamination has received a final decision against it\u00a0in a civil action. \u00a0The USPTO denied Affinity’s petition because\u00a0because the district court\u2019s dismissal,
\nwithout prejudice did not meet section 317(b)\u2019s required condition for terminating\u00a0the reexamination. \u00a0The reexamination resulted in invalidation of all of the claims, which was affirmed by the PTAB.<\/p>\n

The claims \u00a0the claim included a dual download feature, inter alia, requiring:<\/p>\n

in response to receiving the request<\/strong>, making\u00a0a first version of the piece of selectable\u00a0content available for downloading to the\u00a0wireless user device and a second version\u00a0of the piece of selectable content available\u00a0for downloading to a personal computer of\u00a0the user, wherein the first version has the\u00a0specific format and the second version has\u00a0a different format playable by the personal\u00a0computer;
\nsending the first version of the piece of selectable\u00a0content to the wireless user device;\u00a0and
\nsending the second version of the piece of\u00a0selectable content to the personal computer.<\/p><\/blockquote>\n

Affinity argued that the two sending steps must occur automatically, without intervening steps, after the “in response to” language. \u00a0The Federal Circuit disagreed, noting\u00a0that each of the five steps of method claim 4 \u2014including the three steps of the dual download feature\u2014 are offset by semicolons. The Federal Circuit said: “This punctuation choice strongly indicates that each step\u00a0is separate and distinct.”<\/strong> It would, therefore, be reasonable\u00a0to conclude the fourth and fifth steps\u2014the sending\u00a0steps\u2014are not tied to the \u201cmaking . . . available\u201d step and
\nnot performed \u201cin response to\u201d the same request found in
\nthe \u201cmaking . . . available\u201d step, as Affinity argued. \u00a0The 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. \u00a0The Federal Circuit thus affirmed the broad claim construction by the Board, and the invalidation of those broad claims.<\/p>\n

Because the Federal Circuit agreed that the estoppel provision of \u00a7 317(b)\u00a0did not prohibit the PTO from maintaining the reexamination
\nof the \u2019772 Patent\u2019s claims, and the Board\u2019s construction of the claims was consistent with the broadest reasonable interpretation, the Federal Circuit affirmed the\u00a0Board\u2019s decision.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In In re Affinity Labs of Texas, LLC, [2016-1173] (May 5, 2017), the Federal Circuit affirmed the Board’s decision that \u00a7317(b)\u00a0did not bar the reexamination, and that the reexamined claims were in valid. Affinity sued Apple for infringement of U.S. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7,30],"tags":[],"class_list":["post-1536","post","type-post","status-publish","format-standard","hentry","category-claim-constructino","category-reexamination"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1536","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1536"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1536\/revisions"}],"predecessor-version":[{"id":1537,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1536\/revisions\/1537"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1536"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1536"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1536"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}