Synqor, Inc. v. Vicor Corporation
988 F.3d 1341
Fed. Cir.2021Background
- The dispute concerns SynQor’s U.S. Patent No. 7,072,190 (the ’190 patent) on high-efficiency DC-DC power converters; claims 1–19, 28, 31 and later-added claims 34–38 were challenged in inter partes reexamination.
- Vicor relied on a combination of prior art (Steigerwald and Cobos; and for some claims a third reference) to argue obviousness.
- Earlier PTO Board reexaminations of related patents (the ’702 and ’290 patents) concluded that Steigerwald and Cobos were incompatible due to switching-frequency differences; this court affirmed the Board’s decision as to the ’290 reexamination.
- In the ’190 reexamination the Board reached the opposite factual conclusion—finding no frequency incompatibility—and held many claims obvious; SynQor appealed.
- The Federal Circuit held that issue preclusion (collateral estoppel) from the prior reexaminations barred the Board from finding an artisan would have been motivated to combine Steigerwald and Cobos; it vacated the Board’s obviousness determinations for claims 1–19, 28, and 31 and remanded.
- The ’190 patent expired before resolution of newly presented claims 34–38, rendering review of those claims moot; the court vacated the Board’s decisions on those claims as well.
Issues
| Issue | Plaintiff's Argument (SynQor) | Defendant's Argument (Vicor) | Held |
|---|---|---|---|
| Applicability of collateral estoppel to inter partes reexamination and preclusive effect on the finding that Steigerwald and Cobos could be combined | Prior Board findings in ’702 and ’290 reexams (and this Court’s affirmance as to ’290) resolved the identical factual issue (frequency incompatibility); the PTO Board in the ’190 reexam was therefore collaterally estopped from finding compatibility/motivation to combine | Inter partes reexamination is examinational/inquisitorial (not adjudicatory); administrative decisions lack court‑like procedures (no compulsory process/cross‑examination), so common‑law issue preclusion should not apply | Court held collateral estoppel applies to inter partes reexaminations here and that prior findings precluded the Board from finding Steigerwald/Cobos compatible; vacated Board’s decision as to claims 1–19, 28, and 31 and remanded |
| Adequacy / consistency of the Board’s explanations across reexaminations and internal inconsistencies | Board’s later contrary rulings were inadequately explained and internally inconsistent, requiring vacatur under administrative‑law principles | Board’s technical factfinding is entitled to deference; procedures afford adequate opportunity to litigate | Court did not reach this argument on the merits because collateral estoppel resolved the dispute for the principal claims |
| Additional obviousness ground combining Steigerwald, Cobos, and a third reference (claims 2–4) | The Board lacked substantial evidence that an artisan would combine Steigerwald and the third reference | Vicor contended adequate evidentiary support existed | Court did not resolve this argument on appeal (preclusion disposition made it unnecessary) |
| Mootness and vacatur for newly presented claims (34–38) after patent expiration | Expiration prevents any reexamination certificate issuing for new/amended claims, so the Board’s adverse rulings are moot and should be vacated | Vicor contended preclusion and merits arguments to sustain the Board | Court held the patent expiration rendered review moot; vacated the Board’s decisions as to claims 34–38 |
Key Cases Cited
- B & B Hardware, Inc. v. Hargis Indus., 575 U.S. 138 (2015) (agency decisions have preclusive effect when the agency acted in a judicial capacity and parties had adequate opportunity to litigate)
- Astoria Fed. Sav. & Loan Ass’n v. Solimino, 501 U.S. 104 (1991) (administrative estoppel suitability depends on context and congressional intent)
- Vicor Corp. v. SynQor, Inc., 869 F.3d 1309 (Fed. Cir. 2017) (affirming Board’s finding on frequency incompatibility in the ’290 reexam)
- MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373 (Fed. Cir. 2018) (issue preclusion applies to USPTO inter partes review decisions)
- United States v. Munsingwear, 340 U.S. 36 (1950) (vacatur available when review is frustrated by subsequent events)
- Camreta v. Greene, 563 U.S. 692 (2011) (vacatur to prevent unreviewable decisions from spawning legal consequences)
- Microsoft Corp. v. i4i Ltd., 564 U.S. 91 (2011) (recognizing the considered judgment of an expert agency)