Federal Circuit Revives SynQor PatentFebruary 24, 2021

On February 22, 2021, the United States Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board’s decision that SynQor’s US Patent No. 7,072,190 was unpatentable.

SynQor’s ‘190 patent relates to technology that converts DC current from one voltage to another for use in large computer systems and data communication equipment. SynQor calls this technology “Intermediate Bus Architecture” which is said to improve conventional systems by “separating the isolation and regulation functionality of DC-DC converters into two steps and using a single isolation stage to drive multiple regulation stages.”

In 2011 SynQor accused Vicor of infringing this patent, as well as two other patents. In response, Vicor petitioned for reexamination of the three patents. Vicor argued, among other things, that the claims were unpatentable over two reference documents, “Steigerwald” and “Cobos.” SynQor countered that a person of ordinary skill in the art would not have combined Steigerwald and Cobos because they teach circuits that operate at incompatible frequencies.

On appeal from the reexamination of the other two patents, the Board affirmed that the claims were patentable due to the incompatible frequencies between Steigerwald and Cobos. The Board reasoned that SynQor’s evidence that Steigerwald and Cobos operated at incompatible frequencies was more credible than Vicor’s evidence to the contrary. Vicor appealed and the Federal Circuit affirmed the patentability of the challenged claims. The court held that substantial evidence supported the Board’s finding that a skilled artisan would not combine the two documents due to incompatible frequencies.

In contrast, after reexamination of the ‘190 patent, the Board found instead that Steigerwald and Cobos were not incompatible and concluded that the challenged claims of this patent were obvious because the Board “was not persuaded that the switching frequency differential is sufficient to render the combination unsuitable” and “the evidence points strongly to the lack of a frequency range discrepancy between Cobos and Steigerwald.” SynQor appealed arguing, among other things, that common law issue preclusion should have collaterally estopped the Board from finding that an artisan would be motivated to combine Steigerwald and Cobos.

Yesterday, the Federal Circuit agreed with SynQor. The court explained that administrative decisions have preclusive effect when that administrative agency is acting in a judicial capacity and resolves issues of fact when the parties before it have had an opportunity to litigate the disputed issue. Inter partes reexaminations, such as in this case, meet that threshold definition for applying common law issue preclusion and the statutory scheme governing these proceedings was found consonant with common law estoppel. Even though the reexamination is not formally adversarial and does not allow for discovery or subpoena power or cross-examination, both parties may present and rebut both evidence and legal arguments, enough for the Federal Circuit to state that both parties had the opportunity to “fully participate.”

Issue preclusion is appropriate if the issue in the second action is identical to the issue decided in the first action, the issue was actually litigated in the first action, resolution of the issue was essential to a final judgment in the first action, and the parties had a full and fair opportunity to litigate the issue in the first action. Here, the Federal Circuit found that the issue is identical – whether or not an artisan would have combined the two references. The court found that the issue was litigated and decided in the first reexamination and that the finding that an artisan would not combine Steigerwald and Cobos was essential to the holding that the patents were not obvious. Furthermore, Vicor was found to have fully participated in the first action. Therefore, common law issue preclusion applies and the Board’s decision of obviousness is vacated, reviving SynQor’s ‘190 patent.

Julie L. Spieker is an Intellectual Property Attorney in the MVS Biotechnology & Chemical Practice Group as well as the Mechanical and Electrical Practice Group. To learn more, visit our MVS website , or contact Julie directly via email .

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