CAFC Vacates and Remands Inconsistent Rulings by the Board on Validity of two SynQor Patents

16-2283.Opinion.8-29-2017.1 Vicor Corp. v. SynQor, Inc., Nos. 2016-2283, 2016-2282, 2017 U.S. App. LEXIS 16598 (Fed. Cir. Aug. 30, 2017) (Before Lourie, Taranto, and Chen, J.) (Opinion for the court, Chen, J.).

Vicor requested inter partes reexamination of two SynQor patents, directed to DC-DC power converters. The same panel considered both proceedings, upholding the validity of certain claims of the ’290 Patent and invalidating certain claims of the ’021 Patent. Both parties appealed and the Court consolidated the appeals.

A related SynQor patent had been involved in several previous proceedings, including a patent infringement suit and two reexaminations. In all proceedings, SynQor relied on secondary considerations to prove nonobviousness. The Board rulings in the ’290 and ’021 Patent reexaminations were inconsistent, despite sharing the same record. In the ’290 reexamination, the examiner adopted positions by the Board in an earlier reexamination, finding no motivation to combine the cited references. Regarding a new combination of references, the examiner based a conclusion of nonobviousness exclusively on secondary considerations. The Board affirmed the examiner. In the ’021 reexamination, the Board affirmed all rejections that the claims were anticipated and obvious. Applying all Graham factors, the Board found the same secondary considerations evidence from the ’290 reexamination did not outweigh obviousness in the ‘021 reexamination. The Board provided no explanation for this discrepancy.

The Court affirmed the Board’s ‘290 decisions to the extent they were consistent with the Board’s findings in the ’021 Patent and remanded the inconsistent findings. The Board failed to address all grounds for proposed rejections under the APA by ignoring certain arguments made by Vicor during the reexamination. Additionally, the Board failed to address all four Graham factors. “[E]vidence relating to all four Graham factors… must be considered before determining whether the claimed invention would have been obvious…” The Board’s decision was erroneous because the same panel reached inconsistent conclusions on the same issue between the same parties and on the same record, and without explanation.

In the ’021 case, the Court found that SynQor failed to show that any error in the Board’s conclusions was prejudicial error. For instance, SynQor argued that the Board relied on a new ground of rejection, but failed to establish that the Board’s decision had a prejudicial effect on the proceeding. The Court found that the Board also relied on findings by the examiner that were supported by substantial evidence. However, the Court vacated and remanded, for reconsideration of SynQor’s secondary considerations evidence.

The Graham analysis for obviousness requires an examination of all four factors. When seeking review of an unfavorable agency decision, an appellant must also show that the error resulted in a prejudicial effect. Inconsistent findings may be remanded for further findings and a consistent resolution.

The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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  1. Paul F. Morgan September 9, 2017 2:18 pm

    Another example [in addition to excessive delays] of why the AIA elimination of inter partes reexaminations was good idea.