  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 reexamina-
tion 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 dis-
missed with prejudice and Apple’s invalidity counter-
claims were dismissed without prejudice. Apple also filed
a notice of non-participation in the reexamination. Affini-
ty 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 pre-
America 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 sus-
tained 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 pro-
ceedings, which, by definition, are filed post-AIA. Con-
gress 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 maintain-
ing 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 dismis-
sal, without prejudice, of Apple’s invalidity counterclaims
as meeting section 317(b)’s required condition for termi-
nating 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 Direc-
tor 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 pa-
tent’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 reexami-
nation of the ’772 patent’s claims and the Board’s con-
struction 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 reexam-
ination was improperly maintained over the estoppel
provision of pre-AIA 35 U.S.C. § 317(b).




    3  Affinity canceled claim 1 during the reexamina-
tion 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 prov-
ing invalidity, we reject its argument based on section
317(b).
     Under the plain language of section 317(b), the dis-
trict court’s dismissal without prejudice of Apple’s invalid-
ity counterclaims does not reflect a “final decision” that
Apple failed to “sustain[] its burden of proving the inva-
lidity” 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) (“Dis-
missal 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 down-
load 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 reexamina-
tion, is representative 4 of the ’772 patent’s claimed inven-
tion:



    4    During the reexamination, both the Examiner and
the Board treated claim 4 as representative of all chal-
lenged 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 spe-
        cific format of content file, the user inter-
        face 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 wire-
        less user device;
        in response to receiving the request, mak-
        ing 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 se-
        lectable content to the wireless user de-
        vice; and
        sending the second version of the piece of
        selectable content to the personal comput-
        er.
’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 Exam-
iner’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 un-
patentable 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 desti-
    nation devices for receiving downloads of the se-
    lected 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 de-
    vice. In addition, the format of the download may
    match or conform to the selected destination de-
    vice(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 re-
sponse to the same request found in the preceding “mak-
ing . . . available” step. We note that each of the five steps
of method claim 4—including the three steps of the so-
called dual download feature—are offset by semicolons.
This punctuation choice strongly indicates that each step
is separate and distinct. It would, therefore, be reasona-
ble 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 under-
stood to signify that the claims do not exclude the pres-
ence 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 specifi-
cation 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 devic-
es 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 specifica-
tion 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 inter-
pretation 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.
