Patent Case Summaries - February 2021 #3

Alston & Bird

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

SynQor, Inc. v. Vicor Corp., No. 2019-1704 (Fed. Cir. (PTAB) Feb. 22, 2021). Opinion by Hughes, joined by Clevenger. Dissenting opinion by Dyk.

Vicor initiated inter partes reexamination proceedings challenging claims in three related patents owned by SynQor. In prior appeals concerning two of those patents, the Federal Circuit had affirmed the Patent Trial and Appeal Board’s ruling that the challenged claims were not unpatentable. Those appeals involved the “Steigerwald” and “Cobos” prior art references, and the Federal Circuit agreed with the Board that an artisan would not combine them “because of their frequency incompatibility.”

For the third patent (which expired just before the Board’s decision), however, the Board found differently. The Board determined that Steigerwald and Cobos were not incompatible, and the Board then ruled that the challenged original and newly presented claims were unpatentable as obvious based on that combination.

SynQor appealed, arguing that issue preclusion stemming from the two earlier reexaminations should have collaterally estopped the Board from finding that an artisan would be motivated to combine Steigerwald and Cobos. SynQor also argued that the Board’s decision regarding the newly presented claims “became moot through the happenstance of patent expiration.”

The Federal Circuit first analyzed in detail whether issue preclusion (collateral estoppel) applies such that “the resolution of a factual dispute in a first inter partes reexamination [can] collaterally estop the contrary resolution of that dispute in a second reexamination.” The court held that it does apply per “the statutory estoppel scheme for inter partes reexaminations, the informal procedural safeguards, the nature of the tribunal, and the overall magnitude and complexity of the proceedings.”

The Federal Circuit then held that the facts supported applying collateral estoppel in this case. Therefore, the Board was precluded from finding that an artisan would combine Steigerwald and Cobos. The Federal Circuit thus vacated the Board’s decision on the challenged original claims.

Finally, turning to the newly presented claims, the Federal Circuit agreed with SynQor that the court lacked jurisdiction because the expiration of the patent rendered the question of patentability moot.

Judge Dyk dissented from the majority’s holding that collateral estoppel applies to inter partes reexamination proceedings. In his view, “the majority’s holding is incorrect because these proceedings are examinational (or inquisitorial) rather than adjudicatory, do not include court-like adjudicatory procedures, and do not satisfy the requirements of [Supreme Court precedent] for application of collateral estoppel.”

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