ORDER GRANTING DISMISSAL

YVONNE GONZALEZ ROGERS, District Judge.

Defendants Blackberry Limited and Blackberry Corporation ("Blackberry") move, pursuant to Rules 12(c) and/or 12(b)(6) of the Federal Rules of Civil Procedure for dismissal of the instant action. Blackberry's motion indicates that all claims of U.S. Patent No. 8,532,641 that Affinity Labs of Texas, LLC ("Affinity") asserted against it have been found invalid by the Patent Trial and Appeal Board ("PTAB") in a final written decision. Affinity exhausted all appeals and the PTAB's decision invalidating these claims was not overturned or altered in any manner.

The essence of motion focuses not on whether a dismissal should issue, but the scope of the dismissal. Blackberry contends that the action should be dismissed with prejudice, except that its claims, defenses, or counterclaims against Affinity should be dismissed without prejudice.1 Affinity would not stipulate to such a dismissal insisting instead that the dismissal should be contingent upon Blackberry's agreement that claims not asserted in this action are "valid and enforceable" and that Affinity may sue Blackberry on those claims separately.2 Blackberry refused protesting that such contingencies effectively would require Blackberry to waive future defenses or counterclaims. At the same time, Blackberry argues that the dismissal should not be limited "unfairly" to the claims Affinity asserted in its Infringement Contentions herein, but should dismiss all claims of the '641 patent. (Reply at 1:14-25.)

Since the filing of the instant motion, Affinity filed a new action asserting different claims of the '641 patent from those invalidated by the PTAB's decision. Affinity Labs concedes that the present suit should be dismissed. Affinity Labs contends that the dismissal herein should not leave ambiguous the status of the claims of the '641 patent not asserted herein.

The Amended Complaint in this action, filed on May 14, 2014, is the operative complaint. (Dkt. No. 66.) The Amended Complaint attached and incorporated Affinity's Infringement Contentions for the '641 patent. (Id. ¶ 33, Exh. B.) The Court finds that the dismissal of the action herein, based upon the PTAB's decision invalidating all claims asserted in the Infringement Contentions, as incorporated into the Amended Complaint, is limited to those claims. To the extent that Blackberry contends other factual circumstances, not apparent from the face of the operative complaint, warrant preclusion of a separate action alleging other claims of the '641 patent were infringed by Blackberry, it is free to so argue in that action. Cf. Fox Grp., Inc. v. Cree, Inc., 700 F.3d 1300, 1308 (Fed. Cir. 2012) (vacating dismissal of entire patent as invalid where the complaint alleged infringement of "one or more claims" but was narrowed subsequently to particular, limited claims); Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1193 (Fed. Cir. 2014) (no formal dismissal or stipulation is required to remove patent claims no longer in the litigation, and "[t]he scope of any judgment should conform to the issues that were actually litigated").

The motion to dismiss is GRANTED with respect to claims 1-3 and 5-14 of the '641 patent, the claims alleged in the Amended Complaint and actually litigated here. Affinity's complaint for infringement of these patent claims is dismissed with prejudice. Given the lack of any objection, the Court dismisses Blackberry's claims, defenses, or counterclaims without prejudice

This terminates Docket No. 151.

IT IS SO ORDERED.