  United States Court of Appeals
      for the Federal Circuit
                ______________________

     IN RE: AFFINITY LABS OF TEXAS, LLC,
                     Appellant
              ______________________

                 2016-1092, 2016-1172
                ______________________

    Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
90/010,333, 95/001,223, 95/001,264.
                 ______________________

                 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 two inter partes reexamina-
tions and an ex parte reexamination of U.S. Patent No.
2                          IN RE: AFFINITY LABS OF TEXAS, LLC




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) re-
quested inter partes reexamination of all claims based on
additional, different asserted grounds of unpatentability.
And Apple Inc. (Apple) requested inter partes reexamina-
tion of all claims based on still different asserted grounds
of unpatentability. The United States Patent and Trade-
mark 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, uphold-
ing 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 reex-
aminations, 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



    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.
IN RE: AFFINITY LABS OF TEXAS, LLC                        3



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 juris-
diction under 28 U.S.C. § 1295(a)(4)(A).
     Affinity first argues that the PTO erred in maintain-
ing the reexaminations in light of the final decision that
Volkswagen failed to prove invalidity of two of the pa-
tent’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 sec-
tion 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 objec-
tive indicia evidence of nonobviousness. Because the
plain language of pre-AIA section 317(b) precludes Affini-
ty’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.
4                          IN RE: AFFINITY LABS OF TEXAS, LLC




                       BACKGROUND
                  I.     The ’833 Patent
     The ’833 patent relates to a system and method for
connecting a portable media player, such as an MP3
player, to a different electronic device, such as a car audio
system. ’833 patent col. 3, l. 35 – col. 4, l. 34. When the
portable media player is connected to the different elec-
tronic device, the system provides the user with a graph-
ical user interface on the display of that different
electronic device. Id. col. 11, ll. 28–44. The user can then
select and play music stored on the portable media player
by pressing soft buttons displayed in the graphical user
interface of the different electronic device. The ’833
patent’s claims are directed to systems and methods of
displaying on the different electronic device a menu of
titles associated with media files stored on the portable
media player. Claim 1 is representative:
    1. An audio system, comprising:
        a portable electronic device having a dis-
        play, a memory, and an audio file player;
        a first portion of software saved at the
        portable electronic device and configured
        to initiate a displaying of a graphical in-
        terface item on the display, the graphical
        interface item comprising a name associ-
        ated with an audio file saved in the
        memory;
        a mounting location on the portable elec-
        tronic device that includes a physical in-
        terface configured to communicatively
        couple the portable electronic device to a
        different electronic device having an asso-
        ciated display; and
IN RE: AFFINITY LABS OF TEXAS, LLC                        5



         an other portion of software saved at the
         portable electronic device and configured
         to communicate a representation of the
         graphical interface item to the different
         electronic device via the physical interface
         to facilitate a displaying of the representa-
         tion on the associated display, wherein the
         portable electronic device is configured to
         communicate interface information to the
         different electronic device in order to allow
         a user to view at least a partial represen-
         tation of a graphical user interface that
         includes the graphical interface item on
         the associated display, wherein the graph-
         ical user interface comprises a plurality of
         preprogrammed soft buttons that are
         linked to respective audio information
         sources.
Id. col. 18, ll. 36–61.
   II.     Merger and Severance of the Reexaminations
     Richard King filed a request for ex parte reexamina-
tion of all claims of the ’833 patent on November 7, 2008.
Volkswagen filed a request for inter partes reexamination
of all claims of the ’833 patent on September 22, 2009,
soon after Affinity sued Volkswagen for infringement of
the ’833 patent, among other patents, in district court.
Apple also filed a request for inter partes reexamination of
all claims of the ’833 patent on November 13, 2009, after
Affinity brought suit against Apple on a series of patents,
including the ’833 patent. The PTO granted all three
reexamination requests, and on June 14, 2010, the PTO
sua sponte merged the three reexaminations into one
proceeding.     In addition to traversing the asserted
grounds of rejection, Affinity also sought to add new
claims 36–49.
6                          IN RE: AFFINITY LABS OF TEXAS, LLC




     During the merged reexamination proceeding, Apple
and Affinity reached a settlement, Apple took a license to
the ’833 patent, and the parties filed a joint stipulation of
dismissal in the co-pending district court case. Pursuant
to the joint stipulation, the district court dismissed Affini-
ty’s infringement action with prejudice and Apple’s inva-
lidity counterclaims without prejudice. Apple then filed a
notice of non-participation in the reexamination on Octo-
ber 3, 2011. The district court litigation between Affinity
and Volkswagen, however, proceeded to trial and a jury
returned a verdict that Volkswagen infringed claims 28
and 35 of the ’833 patent and Volkswagen had not proven
that the two asserted claims are invalid in view of prior
art it presented at trial. Volkswagen initially appealed
the verdict but dismissed its appeal following its own
settlement with Affinity. Volkswagen filed a notice of
non-participation in the reexamination on June 14, 2012.
    Affinity then petitioned the PTO to terminate the en-
tire merged proceedings under 35 U.S.C. § 317(b). Affini-
ty argued that a final judgment was entered adverse to
inter partes requester Volkswagen regarding the validity
of the challenged claims, inter partes requester Apple no
longer had a legal or economic incentive in maintaining
the reexamination given the settlement, and all grounds
for unpatentability raised by the ex parte reexamination
were traversed. The PTO dismissed Affinity’s request to
terminate the merged proceeding. It did, however, sever
the Volkswagen reexamination and held the estoppel
provision of pre-AIA section 317(b) would apply in the
severed proceeding as to independent claims 28 and 35.
Therefore, the PTO concluded that no rejections would be
asserted in that proceeding of claims 28 and 35 and as a
natural consequence, their dependent claims 29–34, 48,
and 49.
IN RE: AFFINITY LABS OF TEXAS, LLC                         7



                III.   Rejections and Appeal
     The Examiner issued Right of Appeal Notices in both
proceedings. In the severed Volkswagen reexamination,
the Examiner rejected claims 1–5, 8–20, and 22–27 as
unpatentable based on various prior art references and
combinations. The Examiner stated that claims 28–35,
48, and 49 were no longer subject to reexamination;
claims 6, 7, and 21 were patentable over the asserted art;
and newly added claims 36–46 were objected to as de-
pendent upon rejected base claims but would be allowed if
rewritten in independent form. In the merged King/Apple
reexamination proceeding, the Examiner rejected claims
1–27 and new claims 37–42, 45, and 46, added during
reexamination. The Examiner stated that claims 28–35,
48, and 49, however, are patentable over the asserted
prior art and claims 36, 43, 44, and 47 are objected to as
dependent upon rejected base claims but would be allowed
if rewritten in independent form.
     Affinity appealed and the Board affirmed the Exam-
iner’s rejections in two final written decisions. In particu-
lar, the Board sustained the following grounds of rejection
in the merged King/Apple reexamination:
        •   Claims 1–27, 39, and 45 as anticipated by U.S.
            Patent No. 6,671,567 (Dwyer), or obvious over
            Dwyer in combination with additional second-
            ary references; and
        •   Claims 1–26, 37–42, and 45–46 as obvious over
            U.S. Patent No. 6,694,200 (Naim) and U.S. Pa-
            tent No. 6,728,531 (Lee), or obvious over Naim
            and Lee in combination with additional second-
            ary references. 2



    2   We note that the Examiner actually rejected claim
36 as obvious over Naim in view of Lee in the body of the
8                          IN RE: AFFINITY LABS OF TEXAS, LLC




     The Board also sustained the following grounds of re-
jection in the severed Volkswagen reexamination:
       •   Claims 1–5, 8–11, 13–18, 20, 22–23, and 25–27
           as anticipated by EP Patent App. No.
           EP0982732 (Hahm) or obvious over Hahm in
           combination with additional secondary refer-
           ences; and
       •   Claims 1–3, 5, 8–17, 19–20, 22–26, and 27 as
           anticipated by U.S. Patent No. 6,407,750 (Gi-
           oscia) or obvious over Gioscia in combination
           with additional secondary references.
                       DISCUSSION
    We review the PTO’s decisions under the standards
set forth in the Administrative Procedure Act (APA), 5
U.S.C. § 706. Pride Mobility Prods. Corp. v. Permobil,
Inc., 818 F.3d 1307, 1313 (Fed. Cir. 2016). We set aside
the agency’s actions if they are “arbitrary, capricious, an
abuse of discretion, or otherwise not in accordance with
law” or “unsupported by substantial evidence.” 5 U.S.C.
§ 706(2). We review its legal conclusions de novo and its
factual findings for substantial evidence. In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is sup-
ported by substantial evidence if a reasonable mind might
accept the evidence as adequate support for the finding.
Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).




Right of Appeal Notice in the merged King/Apple reexam-
ination but mistakenly identified that claim as being
objected to on the cover page. The Board adopted this
mistake and, therefore, omitted claim 36 from its review
of the Examiner’s rejections. Both parties acknowledge
the oversight. We therefore instruct the PTO to correct
the record to reflect that claim 36 stands rejected prior to
issuing the reexamination certificate.
IN RE: AFFINITY LABS OF TEXAS, LLC                      9



            I.     Affinity’s Petition to Terminate
    We first address Affinity’s argument that the PTO
improperly maintained all three reexaminations over the
estoppel provision of pre-AIA 35 U.S.C. § 317(b). Affinity
argues that § 317(b) requires the PTO to terminate the
Volkswagen reexamination in its entirety after
Volkswagen received an adverse ruling as to the asserted
claims—claims 28 and 35—in the co-pending litigation.
Affinity also argues that because the Volkswagen reexam-
ination was merged with the Apple and King reexamina-
tions into a single proceeding at the time—and the parties
were permitted to comment on proposed grounds of un-
patentability that were not advanced in their respective
petitions—the PTO’s decision not to terminate the entire
merged proceeding was error. Affinity does not tie this
argument to the language of the statute but argues the
decision not to terminate all reexaminations frustrates
section 317(b)’s underlying policy goal of preventing
duplicative, harassing actions.      We conclude that a
straightforward reading of the plain language of section
317(b) precludes Affinity’s overly broad conception of the
estoppel provision. We, therefore, find no grounds to
reverse the Board’s final decisions based on section
317(b).
    In order to further encourage parties to use the PTO’s
patent reexamination procedure, Congress enacted in
1999 inter partes reexamination “as an option to the
existing ex parte reexamination proceedings.” 145 Cong.
Rec. 29,972 (1999). With inter partes reexamination,
Congress hoped, as it had when it enacted ex parte reex-
amination years earlier, to “reduce litigation in district
courts and make reexamination a viable, less costly
alternative to patent litigation.” 145 Cong. Rec. 26,984
(1999) (statement of Sen. Hatch). In contrast to ex parte
reexamination, Congress specifically provided the third
party reexamination requester the opportunity to fully
10                          IN RE: AFFINITY LABS OF TEXAS, LLC




participate in the inter partes proceeding. See generally
35 U.S.C. § 311 et seq. (pre-AIA).
    In addition to allowing requester participation in inter
partes reexamination, Congress enacted measures in the
inter partes reexamination statute to “prevent abusive
reexamination requests, including broad estoppel provi-
sions.” 145 Cong. Rec. 26,984 (1999) (statement of Sen.
Hatch). Those provisions are reflected, in part, in 35
U.S.C. § 317 (the pre-AIA version), entitled “Inter partes
reexamination prohibited,” which limits an inter partes
reexamination requester’s ability to continually attack the
validity of a patent’s claims by using the inter partes
reexamination process.       Section 317(a), for example,
generally prohibits an inter partes reexamination re-
quester, whose reexamination request has been granted
and the proceeding on that patent is pending, from filing
“a subsequent request for inter partes reexamination of
the patent” until the first inter partes reexamination has
been completed and a reexamination certificate issues.
Section 317(b) bars a party from using the inter partes
reexamination process after a final decision has been
entered against that party in a civil action, finding “that
the party has not sustained its burden of proving the
invalidity of any patent claim in suit.” The statute pro-
vides in pertinent part:
     Once a final decision has been entered against a
     party in a civil action . . . that the party has not
     sustained its burden of proving the invalidity of
     any patent claim in suit or if a final decision in an
     inter partes reexamination proceeding instituted
     by a third-party requester is favorable to the pa-
     tentability of any original or proposed amended or
     new claim of the patent, then neither that party
     nor its privies may thereafter request an inter
     partes reexamination of any such patent claim on
     the basis of issues which that party or its privies
     raised or could have raised in such civil action or
IN RE: AFFINITY LABS OF TEXAS, LLC                         11



    inter partes reexamination proceeding, and an in-
    ter partes reexamination requested by that party
    or its privies on the basis of such issues may not
    thereafter be maintained by the Office . . . .
35 U.S.C. § 317(b) (pre-AIA). 3
    A few notable features of the inter partes reexamina-
tion statutory estoppel provision stand out from its plain
language: (1) it applies to the party in the civil action that
loses its validity attack against “any patent claim” as well
as the party’s privies; (2) it applies to validity issues
raised in the civil action or that could have been raised in
that action; (3) unlike section 317(a), it speaks in terms of
any “patent claim,” as opposed to the “patent;” (4) it
prohibits the losing party and its privies from requesting
an inter partes reexamination “of any such patent claim;”
and (5) “on the basis of such issues,” it prohibits the PTO
from “maintain[ing]” any inter partes reexamination
requested by the losing party.
    Affinity urges that we order the PTO to terminate all
three reexamination proceedings—even though they
involve several claims beyond the litigated claims 28 and
35, the other inter partes reexamination requester had no
involvement or relationship to that prior litigation, and
the third proceeding was an ex parte reexamination—
based on its reading of section 317(b). The PTO offers a
counter reading of this statutory estoppel provision, which




    3   Although section 317(b) estops parties who have
received a final adverse decision in either a civil action or
an inter partes reexamination, for convenience our discus-
sion focuses on how the estoppel provision operates when
a party receives a final adverse decision in a civil action.
Our analysis and conclusion, however, is equally relevant
in both situations.
12                         IN RE: AFFINITY LABS OF TEXAS, LLC




follows its established practice set forth in Manual of
Patent Examining Procedure (MPEP) § 2686.04(V)(A).
     “Our first step in interpreting a statute is to deter-
mine whether the language at issue has a plain and
unambiguous meaning with regard to the particular
dispute in the case. Our inquiry must cease if the statu-
tory language is unambiguous and the statutory scheme
is coherent and consistent.” Pennzoil–Quaker State Co. v.
United States, 511 F.3d 1365, 1373 (Fed. Cir. 2008) (quot-
ing Robinson v. Shell Oil Co., 519 U.S. 337, 340 (1997)).
“Absent a clearly expressed legislative intention to the
contrary, [the statute’s plain] language must ordinarily be
regarded as conclusive.” Wyeth v. Kappos, 591 F.3d 1364,
1369 (Fed. Cir. 2010) (quoting Consumer Prod. Safety
Comm’n v. GTE Sylvania, Inc., 447 U.S. 102, 108 (1980))
(alteration in original). Moreover, “statutory language
cannot be construed in a vacuum. It is a fundamental
canon of statutory construction that the words of a statute
must be read in their context and with a view to their
place in the overall statutory scheme.” Davis v. Mich.
Dep’t. of Treasury, 489 U.S. 803, 809 (1989).
    The crux of Affinity’s argument is that the statute op-
erates differently and has a much broader impact against
a losing party’s active, pending inter partes reexamination
compared to a losing party’s request for an inter partes
reexamination. According to Affinity, if a patent chal-
lenger conclusively loses its validity challenge in court
against, say, claims 1–5 of a 20-claim patent, section
317(b) prevents that party from requesting an inter partes
reexamination on just claims 1–5 (and not claims 6–20) of
that patent on issues that had been raised or could have
been raised in the civil action. No one disagrees there.
But, in Affinity’s view, section 317(b) requires termination
of a pending inter partes reexamination that had been
requested by the losing party, regardless of which claims
of the patent are being reexamined in the proceeding: it
could be claims 1–10, or 1–20, or even 6–20. For Affinity
IN RE: AFFINITY LABS OF TEXAS, LLC                        13



then, the scope of the statutory estoppel is claim-specific
as to requests for inter partes reexamination, but is purely
patent-as-a-whole-driven for maintaining a pending inter
partes reexamination. We disagree with Affinity’s pro-
posed interpretation and instead see the estoppel provi-
sion’s claim-based approach applying in the same way to
both a request for inter partes reexamination and the
maintenance of a pending inter partes reexamination.
     The structure of pre-AIA section 317(b) contemplates
a parallel and consistent approach to limiting a party’s
ability to request a reexamination and to maintain a
reexamination once a final decision has been entered
against the party in a civil action. The statute first
explains that the party may not request reexamination on
“any such patent claim on the basis of issues which that
party or its privies raised or could have raised in such
civil action.” This language limits the scope of estoppel in
two ways: (i) to the specific claims that were actually at
issue in the district court proceeding; and (ii) to challeng-
es to those claims that were raised or could have been
raised. In other words, the “issues that could have been
raised” are necessarily bounded by the preceding refer-
ence to “any such patent claim.” When the statute subse-
quently prohibits maintaining a reexamination “on the
basis of such issues,” the issues in question are similarly
bounded by the “any such patent claims” limitation. If
Congress had intended the statutory estoppel provision to
apply in a different, broader, patent-based way for pend-
ing inter partes reexaminations (and we see nothing in the
legislative history suggesting such an intent), it under-
stood how to do so, as it did for the subsection immediate-
ly preceding section 317(b). As explained above, in section
317(a), a party who has already triggered a still-pending
inter partes reexamination of a patent’s claims may not
file “a subsequent request for inter partes reexamination
of the patent” until a reexamination certificate issues for
the pending proceeding.
14                          IN RE: AFFINITY LABS OF TEXAS, LLC




     Moreover, the inter partes reexamination statutory
scheme consistently reflects a careful, express focus on
implementing this regime on a claim-by-claim basis.
Section 311 requires an inter partes reexamination re-
quester to “set forth the pertinency and manner of apply-
ing cited prior art to every claim for which reexamination
is requested.” 35 U.S.C. § 311(b)(2) (pre-AIA) (emphasis
added). Under section 312, “the Director shall determine
whether a substantial new question of patentability
affecting any claim of the patent concerned is raised by
the request.” Id. § 312 (emphasis added). Furthermore,
“[i]f . . . the Director finds that a substantial new question
of patentability affecting a claim of a patent is raised, the
determination shall include an order for inter partes
reexamination of the patent for resolution of the question.”
Id. § 313 (emphasis added). In other words, the order to
conduct an inter partes reexamination is to resolve the
patentability questions of particular claims specifically
raised by a requester—not an entire patent—once a
substantial new question of patentability is raised for
those selected patent claims. Had Congress wanted the
inter partes reexamination to extend to all claims of a
patent, regardless of how many claims were requested for
review, it would have left out the final phrase “resolution
of the question” and ended the provision with “an order
for inter partes reexamination of the patent.”
    In addition, this claim-by-claim focus is also reflected
in the converse estoppel provision that prohibits a chal-
lenge to a patent claim which has been finally determined
to be valid in an inter partes reexamination proceeding.
Section 315 provides:
     A third-party requester whose request for an inter
     partes reexamination results in an order under
     section 313 is estopped from asserting at a later
     time, in any civil action arising in whole or in part
     under section 1338 of title 28, the invalidity of any
     claim finally determined to be valid and patenta-
IN RE: AFFINITY LABS OF TEXAS, LLC                        15



    ble on any ground which the third-party requester
    raised or could have raised during the inter partes
    reexamination proceedings.
35 U.S.C. § 315(c) (pre-AIA) (emphasis added). Thus, as
with section 317(b), the statute in section 315(c) similarly
estops the requester from challenging again, in a different
venue, the validity of claims that were actually decided
against the requester. Nothing in section 315(c), however,
estops the requester from challenging at a later time the
validity of a claim that was not previously requested
pursuant to section 311 and reexamined pursuant to
section 313.
    Upon review of the text, structure, and history of the
inter partes reexamination statute, we decline to read
section 317(b) in an incongruous way that would cause
the statutory estoppel provision to apply differently for
requesting an inter partes reexamination compared to
maintenance of a pending inter partes reexamination.
Such a reading would require us to read a patent-based
assumption into a portion of that provision where there is
none and Affinity offers no reason why one would exist.
We, therefore, conclude that section 317(b) plainly limited
the scope of estoppel in all circumstances to only those
claims actually challenged and for which the requesting
party received an adverse final decision in the district
court proceeding. Congress could have mandated that
any challenge to any claim in a patent in an inter partes
reexamination would be estopped once a validity chal-
lenge to one or more claims of the patent had been reject-
ed in a prior proceeding, yet it did not do so. Rather,
Congress chose to estop only further validity challenges—
using inter partes reexamination—to the specific claims
the validity of which had been previously resolved against
the requester. As such, we reject Affinity’s argument that
the PTO was required to terminate the Volkswagen
reexamination with respect to all claims in that reexami-
nation. We instead affirm the PTO’s decision to termi-
16                         IN RE: AFFINITY LABS OF TEXAS, LLC




nate that reexamination as to only the claims in which a
final decision in the civil action has been entered—claims
28 and 35.
     We also find no basis in the statute for Affinity’s ar-
gument that the final decision in the Volkswagen litiga-
tion should have preclusive effect on the reexaminations
requested by King or Apple. By its plain and unambigu-
ous terms, pre-AIA section 317(b) extends only to inter
partes reexaminations—not ex parte reexaminations. The
estoppel effect of the statute, therefore, has no bearing on
the ex parte King reexamination. Moreover, the statute
also imposes the aforementioned limitations only on a
requester that was a party to the civil action or its privies.
Because Apple was neither a party to the Volkswagen
litigation nor was there any evidence Apple was
Volkswagen’s privy, we also find no error in the PTO’s
decision not to terminate the inter partes reexamination
requested by Apple.
    Affinity’s invocation of the general policy goal of pre-
venting abusive reexamination practices cannot override
the statute. “It is a bedrock canon of statutory construc-
tion that our judicial inquiry ends where statutory lan-
guage is plain and unambiguous.” Pfizer, Inc. v. Lee, 811
F.3d 466, 471 (Fed. Cir. 2016) (quoting White v. United
States, 543 F.3d 1330, 1337 (Fed. Cir. 2008)). “[O]nly a
‘most extraordinary showing of contrary intentions’ by
Congress justifies a departure from the plain language of
a statute.” Wyeth, 591 F.3d at 1371 (quoting Garcia v.
United States, 469 U.S. 70, 75 (1984)). The plain lan-
guage of the statute does not permit extending the reach
of estoppel as far as Affinity suggests. Moreover, we have
reviewed the legislative history and find no such extraor-
IN RE: AFFINITY LABS OF TEXAS, LLC                      17



dinary showing sufficient to overcome the statute’s plain
language. 4
    In sum, Affinity has failed to demonstrate that the
PTO’s denial of its petitions to vacate the entire merged
proceeding was arbitrary, capricious, an abuse of discre-
tion, or otherwise not in accordance with law. 5



    4    We also find meritless Affinity’s argument that by
merging the proceedings the PTO “effectively created an
inter partes review.” Affinity Opening Br. at 25. Affinity
provides no statutory, regulatory, or rule-based support
for its allegation, nor can we comprehend how it could do
so, given the PTO merged the proceedings on June 14,
2010—more than two years before inter partes review was
established. We are also unaware of any justification
supporting Affinity’s suggestion that the PTO’s sua sponte
decision to merge the proceedings somehow modifies the
scope of the statutory estoppel applied against the re-
quester.
     5   We reject the Director’s alternative argument that
dismissal of Affinity’s petitions to terminate the reexami-
nations was not a “final” agency action pursuant to the
Manual of Patent Examining (MPEP) § 1002.02 (“A
dismissal of a petition, a denial of a petition without
prejudice, and other interlocutory orders are not final
agency action.”). To the extent the Director argues the
refusal to terminate the proceeding under section 317(b)
is unreviewable under 5 U.S.C. § 704, we have previously
held that such a decision is reviewable once the Board
issues a decision on the merits. See Automated Merchan-
dising Sys., Inc. v. Lee, 782 F.3d 1376, 1381 (Fed. Cir.
2015). We also reject the Director’s argument that Affini-
ty was required to first seek reconsideration under the
circumstances of this case. There was no indication in the
PTO dismissal of Affinity’s petitions that further action
was required by Affinity to receive the PTO’s final an-
18                         IN RE: AFFINITY LABS OF TEXAS, LLC




         II.   Unpatentability of the ’833 Patent
    We next address Affinity’s arguments that the Board
erred in upholding the Examiner’s unpatentability rejec-
tions in both decisions. We conclude that substantial
evidence supports the Board’s unpatentability findings as
to all challenged claims in the merged King/Apple reex-
amination.     Because the claims at issue in the
Volkswagen reexamination comprise only a subset of the
claims in the King/Apple reexamination, we do not ad-
dress the alternative grounds of unpatentability at issue
in the Volkswagen reexamination appeal.
                 A. Anticipation by Dwyer
    Affinity appeals the Board’s decision in the
King/Apple reexamination that claims 1–27, 39, and 45
are anticipated by Dwyer or obvious over Dwyer in view of
additional secondary references. Affinity argues specifi-
cally that Dwyer does not disclose (i) a portable electronic
device configured to display a graphical interface item,
having “a name associated with an audio file saved in
memory,” as required by independent claim 1; or (ii) “a
plurality of preprogrammed soft buttons that are linked to
respective audio information sources,” as required by




swer. Indeed, the PTO’s dismissal—a fifteen-page deci-
sion from the Office of Patent Legal Administration—had
all the hallmarks of a final action marking the consum-
mation of the agency’s decision-making process. In that
decision, the PTO did not reference MPEP § 1002.02, nor
did it inform Affinity that it was required to seek recon-
sideration in the dismissal. We, therefore, think it would
be unnecessary to have required Affinity to have done
more.
IN RE: AFFINITY LABS OF TEXAS, LLC                            19



independent claims 1 and 17. 6 We find both of Affinity’s
arguments unpersuasive.
    A claim is unpatentable as anticipated “if each and
every limitation is found either expressly or inherently in
a single prior art reference.” King Pharm., Inc. v. Eon
Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (citation
omitted). Anticipation is a question of fact we review for
substantial evidence. REG Synthetic Fuels, LLC v. Neste
Oil Oyj, 841 F.3d 954, 958 (Fed. Cir. 2016).




    6    Affinity did not argue to the Board that the de-
pendent claims were separately patentable and it does not
argue the claims separately on appeal. We consider
Affinity’s argument with respect to independent claims 1
and 17 as dispositive of all rejections based on Dwyer. 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 rise and fall together) . . . .”); In re Kaslow, 707
F.2d 1366, 1376 (Fed. Cir. 1983) (“Since the claims are not
separately argued, they all stand or fall together.”) (cita-
tion omitted).
20                            IN RE: AFFINITY LABS OF TEXAS, LLC




     Dwyer generally relates to the field of portable digital
recorders and the “effective and convenient interaction
between a portable digital recorder and a personal com-
puter.” Dwyer col. 1, ll. 36–38. Figure 1 shows the gen-
eral configuration disclosed in Dwyer, whereby a digital
portable recorder 12 is physically connected, by way of a
cradle 14 and a cable 15 to a personal computer 16 (see id.
col. 3, ll. 18–24):




    Dwyer’s recorder stores digital audio files and in-
cludes a touch screen that “provides information to the
user of the recorder, and through which the user inputs
information.” Id. col. 4, ll. 41–42. Dwyer discloses a
variety of touch screen functions and notes that “it is
contemplated to allow the user to control recording,
editing and playback functions via the touch screen,
which also may be used to navigate among voice files and
to select an existing voice file for playback and/or addi-
tional recording.” Id. col. 4, l. 66 – col. 5, l. 3; col. 6, ll. 10–
12. Dwyer also discloses that “[r]ecorded with, or other-
IN RE: AFFINITY LABS OF TEXAS, LLC                         21



wise associated with, each voice file is header data,” id.
col. 5, ll. 16–17, as shown in Figure 5:




That header information includes, specifically, “title or
other identifying data 116, which indicates a title or other
name used to identify the corresponding voice file.” Id.
col. 5, ll. 31–32.
     Given the disclosure above, the Board was reasonable
to conclude that Dwyer’s portable electronic device neces-
sarily displays name information on the graphical inter-
face to allow the user to meaningfully navigate the digital
files stored on the device. Substantial evidence supports
the Board’s finding that this limitation is disclosed by
Dwyer.
     Dwyer also teaches communicating information from
the portable recorder device to the user’s personal com-
puter. Specifically, the Dwyer system contemplates that
the recorder “uploads to the personal computer voice file
identification data corresponding to all of the voice files
(i.e. the portion of the header data indicated as ‘title/I.D.’
data 116 and discussed above in connection with FIG. 5).”
Id. col. 6, ll. 24–28. That header data is used to create a
22                         IN RE: AFFINITY LABS OF TEXAS, LLC




graphical user interface display on the user’s personal
computer, indicative of the files stored in the recorder. In
this way, the user can view and manipulate information
stored on the recorder via the graphical user interface
displayed on the personal computer.
    Dwyer specifically discloses that information, includ-
ing a name, associated with audio files is displayed in the
graphical user interface for selection and playback by the
user. Id. col. 6, ll. 24–36. Figure 8 depicts the infor-
mation presented through the computer screen’s display:




“Field 218 allows the user to focus in on particular voice
files in the recorder,” id. col. 8, ll. 34–35, “[i]cons 220 in
field 218 are each respectively indicative of a voice file
stored in the portable recorder,” id. col. 8, ll. 35–37, and
“[n]ame information indicated at 222 corresponds to the
header data component 116 (FIG. 5) for the voice files,
which was uploaded to the PC . . . .” Id. col. 8, ll. 37–39.
When the user attempts to access information stored in
the portable recorder via the graphical user interface,
Dwyer explains, “the specific file may be selected, for
example, by designating the corresponding icon in the
field 218 of the display of FIG. 8.” Id. col. 9, ll. 6–9.
IN RE: AFFINITY LABS OF TEXAS, LLC                       23



  Based on this disclosure, the Board’s finding that Dwyer
teaches soft buttons (comprised of the icon 220 and name
222 information found in field 218) linked to respective
audio information sources (as stored in the portable
digital recorder) is eminently reasonable. We, therefore,
conclude that substantial evidence supports the Board’s
finding that claims 1–27, 39, and 45 are unpatentable
based on the asserted Dwyer rejections.
          B. Obviousness Based on Naim and Lee
    Affinity also appeals the Board’s obviousness conclu-
sion as to claims 1–26, 37–42, and 45–46 in view of the
combination of Naim and Lee. Affinity argues that nei-
ther Naim nor Lee discloses (i) communicating a graphical
item comprising a name from a portable electronic device
to a different electronic device, as required by claims 1
and 17; or (ii) a portable electronic device with a mounting
location that includes a physical interface, as required by
claims 1, 23, and 24. 7 Affinity further argues that the
Board improperly rejected its objective indicia of nonobvi-
ousness evidence. We disagree with Affinity’s challenges
to the disclosures of Naim and Lee and conclude that
substantial evidence supports the Board’s decision not to
give dispositive weight to Affinity’s objective indicia
argument.
    A claim is unpatentable if the differences between the
claimed subject matter and the prior art are such that the
subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary




    7   Because Affinity does not separately argue the re-
jected dependent claims, with the exception of claims 23
and 24, those claims rise and fall with the independent
claims.
24                         IN RE: AFFINITY LABS OF TEXAS, LLC




skill in the art. 35 U.S.C. § 103; 8 KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007). Obviousness is a question
of law based on underlying findings of fact. Harmonic
Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.
2016). The underlying findings of fact include the scope
and content of the prior art, the differences between the
prior art and the claimed invention, whether there is a
motivation to combine prior art references, the level of
ordinary skill in the art, and relevant secondary consider-
ations. Merck & Cie v. Gnosis S.P.A., 808 F.3d 829, 833
(Fed. Cir. 2015), cert. denied, 137 S. Ct. 297 (2016).




     8   Congress amended § 103 when it passed the
Leahy–Smith America Invents Act (“AIA”). Pub. L. No.
112–29, § 3(c), 125 Stat. 284, 287 (2011). However, be-
cause the application that led to the ’833 patent has never
contained a claim having an effective filing date on or
after March 16, 2013 (the effective date of the statutory
changes enacted in 2011), or a reference under 35 U.S.C.
§§ 120, 121, or 365(c) to any patent or application that
ever contained such a claim, the pre-AIA § 103 applies.
Id. § 3(n)(1), 125 Stat. at 293.
IN RE: AFFINITY LABS OF TEXAS, LLC                       25



     Naim relates to the field of portable digital devices
and specifically teaches a system where recorded audio
files can be transferred from a portable electronic device
to a different electronic device. Naim col. 11, ll. 17–22.
Figure 1B depicts Naim’s system as follows:




    Naim’s portable device comprises two main parts, the
portable player 2 and the hard drive 3. Id. col. 5, ll. 4–5.
Naim explains that “control buttons 15 on the portable
device 1 allow for operation of the player 2 and its inter-
face with the hard disk 3 via an interface 9, which can be
a physical hard connector or a wireless interface.” Id. col.
5, ll. 21–24. In addition, the portable device “can also
have an interface 10 to allow data-file download/upload
26                          IN RE: AFFINITY LABS OF TEXAS, LLC




from an external communications device 11, such as a PC,
to the portable device hard disk 3.” Id. col. 5, ll. 24–27.
     Lee discloses an Internet radio system that can be in-
corporated into a car. The Lee system uses a multimedia
device with a graphical user interface in an automobile
that can interact with portable devices such as notebook
computers, cellular phones, and MP3 players. Lee col. 5,
ll. 47–65; col. 7, ll. 55–61; col. 8, ll. 47–64. As depicted in
Figure 2 below, the Lee multimedia device includes a
display to present audio information to the user via the
graphical user interface.




     The display includes soft buttons that a user can ma-
nipulate to play audio files stored on a portable device.
Id. col. 10, ll. 23–27.
    Affinity first contends that the Board erred in con-
cluding Naim discloses a portable electronic device graph-
ical interface item comprising a name because the only
transfer of data in Naim from the portable device to a PC
“is either . . . statistical information or voice recorded
content,” and “[t]his information need not include identi-
IN RE: AFFINITY LABS OF TEXAS, LLC                       27



fying information.” Affinity Opening Br. 45. We disagree.
First, Naim contemplates bi-directional transfer of infor-
mation between the two devices via interface port 10.
Moreover, “[i]f the portable handheld audio device is used
as a recorder, this port can be used to upload the recorded
content to the computer.” Id. col. 11, ll. 20–22. That
uploaded content is stored in memory as a digital data file
and would necessarily include identifying information
such as file name. From this, it was reasonable for the
Board to find that Naim discloses communicating the
claimed information from the portable electronic device 2
to the external communications device, PC 11. We there-
fore conclude substantial evidence supports the Board’s
finding that this limitation is disclosed by Naim.
     We next address Affinity’s argument that the Board
erred in finding that Lee teaches a “mounting location . . .
that includes a physical interface.” Affinity contends
that, properly construed, this phrase excludes wireless
coupling. And, according to Affinity, Lee teaches only
wireless communication. We, like the Board, reject Affini-
ty’s narrow construction. The Board adopted the Exam-
iner’s interpretation of the claimed physical interface to
comprise any circuitry or the like on or within a device
that allows it to communicate wirelessly or via a wire. It
also endorsed the Examiner’s construction of “mounting
location” as any location on or within the portable device
in which the physical interface is installed or mounted.
We agree with the Examiner that neither the express
language of the claim nor the specification precludes a
wireless interface formed by physical components having
a mounting location on the portable device. See In re
Rambus, Inc., 753 F.3d 1253, 1255 (Fed. Cir. 2014) (not-
ing that, during reexamination, the Board must construe
claims giving them their broadest reasonable interpreta-
tion consistent with the specification). Under the broad-
est reasonable interpretation, substantial evidence
supports the Board’s finding that Lee teaches the claimed
28                         IN RE: AFFINITY LABS OF TEXAS, LLC




“mounting location . . . that includes a physical interface.”
Moreover, the Examiner also expressly found “Naim’s
portable player is capable of communicating to a PC
either wirelessly or via a wire.” J.A. 10643. Indeed, Naim
discloses that the interface between the two devices “can
be a physical hard connector or a wireless interface.”
Naim col. 5, ll. 24–28. Thus, even applying Affinity’s
narrow construction, substantial evidence supports the
Board’s finding that the combination of Naim and Lee
discloses the claimed physical interface.
    Finally, we are not persuaded that the Board erred in
its analysis of Affinity’s proffered objective indicia of
nonobviousness. Affinity pointed to (i) a $25 billion
industry developed around in-vehicle device integration,
which it says is covered by the claims of the ’833 patent;
and (ii) Affinity’s licensing of the ’833 patent and its
siblings to a number of entities in excess of $50 million.
Upon review, however, we agree with the Examiner that
this evidence, at best, establishes a tenuous connection
with the claimed invention.
     Evidence of commercial success is only relevant to the
obviousness inquiry “if there is a nexus between the
claimed invention and the commercial success.” Ormco
Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir.
2006). There is no nexus unless the evidence presented is
“reasonably commensurate with the scope of the claims.”
See Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir.
2013). Here, the Board correctly recognized that Affinity
provided no explanation or analysis that corroborates the
relationship between the claims of the ’833 patent and the
market for in-vehicle device integration technology gener-
ally. Affinity’s argument that the claims of the ’833
patent are directed to the general field of device connec-
tivity and interoperability, without more, does not estab-
lish a meaningful connection with the asserted
commercial success. We, therefore, see no error in the
Board’s decision that this evidence of nonobviousness was
IN RE: AFFINITY LABS OF TEXAS, LLC                      29



entitled to little weight. See Pro-Mold & Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996)
(“It is within the province of the fact-finder to resolve
these factual disputes regarding whether a nexus exists
between commercial success of the product and its pa-
tented features, and to determine the probative value of
. . . evidence of secondary considerations . . . .”).
     Moreover, the mere fact of licensing alone cannot be
considered strong evidence of nonobviousness if it cannot
also be shown that the licensees did so out of respect for
the patent rather than to avoid the expense of litigation.
See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d
1317, 1324 (Fed. Cir. 2004) (“Our cases specifically re-
quire affirmative evidence of nexus where the evidence of
commercial success presented is a license, because it is
often ‘cheaper to take licenses than to defend infringe-
ment suits.’”). To support its licensing argument, Affinity
did not enter the actual licenses into the record but,
rather, submitted the unsupported declaration of Affini-
ty’s President that it “has generated revenues of over
$50,000,000 for licensing the ’833 patent and related
patents.” J.A. 10488 (emphasis added). Affinity did not
explain what percentage of this revenue—if any—was
attributed to the ’833 patent instead of the related pa-
tents, the terms of the licenses, the nature and number of
other patents at issue in the licenses, or the circumstanc-
es under which they were granted, except to concede that
some “were entered as part of settlement of pending
lawsuits.” Id. This court has explained that, as here,
“[w]hen the specific licenses are not in the record, it is
difficult for the court to determine if ‘the licensing pro-
gram was successful either because of the merits of the
claimed invention or because they were entered into as
business decisions to avoid litigation, because of prior
business relationships, or for other economic reasons.’” In
re Cree, Inc., 818 F.3d 694, 703 (Fed. Cir. 2016) (quoting
In re Antor Media Corp., 689 F.3d 1282, 1294 (Fed. Cir.
30                         IN RE: AFFINITY LABS OF TEXAS, LLC




2012)). Because of the lack of specificity in Affinity’s
licensing argument, the Board correctly afforded this
evidence little weight.
                       CONCLUSION
    For the foregoing reasons, we affirm the -4281 Board
Decision that claims 1–27, 37–42, and 45–46 are un-
patentable. Because claim 36 was rejected by the Exam-
iner and Affinity has made no independent argument that
claim 36 was improperly rejected apart from those argu-
ments made with respect to the independent claims, we
remand to the Board for the limited purpose of correcting
the record to reflect that claim 36 is rejected as unpatent-
able before issuing a reexamination certificate. Because
we affirm the -4281 Board Decision, we need not resolve
Affinity’s appeal relating to the -6122 Board Decision
upholding the unpatentability of claims 1–5, 8–20, and
22–27, and dismiss that appeal as moot.
     AFFIRMED-IN-PART, REMANDED-IN-PART,
             DISMISSED-IN-PART
                          COSTS
     No costs.
