SynQor, Inc. v. Vicor Corp., Appeal No. 2019-1704 (Fed. Cir. Feb. 22, 2021)
In this week’s Case of the Week, the Federal Circuit held that common law collateral estoppel could arise from a factual determination made in an inter partes reexamination proceeding and lead to issue preclusion in a subsequent inter partes reexamination. The inter partes reexamination procedure was replaced with inter partes reviews in 2012 following enactment of the America Invents Act, and so the Court’s holding is necessarily limited to the handful of inter partes reexaminations still pending rehearing or appeal. Nonetheless, the decision offers detailed guidance on when administrative determinations may be given preclusive effect, and could potentially open the door to certain issues decided in inter partes reexaminations becoming preclusive as to district court litigation or other USPTO proceedings.
The case concerned the Patent Trial and Appeal Board’s affirmance of a reexamination decision finding that claims of appellant SynQor’s DC-to-DC voltage converter patent were obvious over a combination of prior art references referred to as Steigerwald and Cobos. In prior inter partes reexamination decisions on two related patents, the Board had found that an ordinarily skilled artisan would not be motivated to combine Steigerwald and Cobos because they taught circuits that operated at incompatible frequencies, a finding that the Federal Circuit had affirmed. In the instant case, the Board reached the contrary conclusion that the frequency differential was insufficient to render the combination unsuitable as a whole.
The Federal Circuit agreed with SynQor that the Board was collaterally estopped from now finding that an artisan would be motivated to combine the Steigerwald and Cobos references. In determining whether collateral estoppel could apply, the Court first considered whether Congress intended to foreclose issue preclusion from inter partes reexamination decisions, or whether there was any categorical reason why such decisions could never meet the ordinary elements of issue preclusion. Relying primarily on the statutory estoppel provisions applicable to inter partes reexaminations—which provided for grounds-based estoppel similar to the current inter partes review estoppel provisions of 35 U.S.C. § 315(e), as well as fact-based estoppel in subsequent district court actions except in cases of previously-unavailable information—the Court found that Congress did not in principle intend to preclude collateral estoppel as between inter partes reexaminations.
In determining whether inter partes reexaminations would categorically fail to meet the ordinary elements of issue preclusion, the Court’s analysis focused on whether each party had been given a fair opportunity to rebut evidence and argument by opposing parties. In finding that they had, the Court rejected patent challenger Vicor’s arguments that inter partes reexaminations are inquisitorial rather than adversarial, noting that even if not formally adversarial in the manner of inter partes reviews, a reexamination requestor was nonetheless able to fully participate in the proceedings through responses to each submission of arguments or evidence by the patent owner. The Court also found that the unavailability of cross-examination through compulsory process in such proceedings, while potentially weighing against preclusivity, was nonetheless not dispositive. On this point, the Court noted, inter alia, that a party is subject to the same procedures in a second inter partes reexamination as it was in a prior reexamination, and that the technical expertise of Board factfinders lessened the need for expert evidence to be tested through cross-examination rather than presentation of contrary evidence.
Having found that issue preclusion could legally apply to collaterally estop the Board from finding a motivation to combine, the Court proceeded to find that the Board was so estopped in this case, and vacated and remanded the decision. Judge Dyk dissented, arguing that inter partes reexamination proceedings were inquisitorial and examinational rather than adversarial and adjudicative, and that Vicor’s inability to cross-examine SynQor’s expert testimony in the prior proceedings had denied Vicor a full and fair opportunity to litigate the issue.
A copy of the opinion can be found here.
By Jason A. Wrubleski