Vicor Corporation v. Synqor, Inc.
869 F.3d 1309
Fed. Cir.2017Background
- SynQor owns patents ('290 and '021) claiming an “Intermediate Bus Architecture” (IBA) that separates DC-DC conversion into a single non‑regulating isolation stage that feeds multiple non‑isolating regulation stages. Claims include limits (e.g., switching regulators in '290; "substantially uninterrupted" transformer power flow in '021).
- Vicor requested inter partes reexaminations of both patents; PTO Board (same panel) rendered decisions on the same date but reached inconsistent results: affirmed patentability of the '290 claims and held the '021 claims unpatentable.
- Prior art central to the disputes: Steigerwald ’090 and ’539 (treated together as an alternative embodiment), Cobos, Pressman, JP '446, and Kassakian. Earlier related proceedings: SynQor I (jury verdict of nonobviousness affirmed) and SynQor II (this court found a Steigerwald combination anticipated a representative claim of SynQor’s '190 patent, vacating some Board findings).
- The Board in the '290 reexam withdrew some examiner rejections based largely on SynQor’s secondary considerations (commercial success, copying, praise) without fully applying all Graham factors; in the '021 reexam the Board found anticipation by Steigerwald and that claims were obvious, and it weighed the same secondary evidence differently.
- The Federal Circuit reviewed the Board’s factual findings for substantial evidence and legal determinations de novo, vacating and remanding portions of both Board decisions because the Board (1) failed to apply all Graham factors before relying solely on secondary considerations in the '290 reexam, (2) reached unexplained, inconsistent conclusions across the two contemporaneous reexaminations (notably whether Pressman’s switching regulators would have been combined with Steigerwald), and (3) in some places failed to address arguments or explain its reasoning adequately.
Issues
| Issue | SynQor's Argument | Vicor's Argument | Held |
|---|---|---|---|
| Whether proposed rejections I–II (Steigerwald '090 + Cobos + Pressman) render '290 claims obvious based on frequency incompatibility evidence | SynQor: testified (Dr. Schlecht) and cited publications showing Steigerwald operates at high frequencies, so Cobos (low‑freq) couldn’t be combined; no motivation to combine | Vicor: challenges witness bias and argues combination was plausible | Affirmed Board: substantial evidence supports frequency incompatibility and lack of motivation to combine; rejections I–II not adopted. |
| Whether the Board could withdraw rejections III–IV (JP '446 + Steigerwald '539 + Kassakian) solely on secondary considerations for '290 | SynQor: secondary evidence shows nexus to claimed IBA and supports nonobviousness | Vicor: prior art combinations raise obviousness; SynQor II may undercut nexus | Vacated and remanded: Board erred by considering only secondary considerations and gave inconsistent weight compared to '021 reexam; must apply all Graham factors and reassess nexus in light of SynQor II. |
| Whether Pressman’s switching regulators would have been obvious to combine with Steigerwald (rejections V–VI in '290; III–IV in '021) | SynQor: Pressman’s regulators would introduce inductance and Steigerwald teachings/prosecution discourage adding inductance; thus no motivation | Vicor: Pressman teaches efficiency benefits; skilled artisan could have been motivated to combine | Vacated and remanded: Board issued opposite findings in the two reexams without reasoned explanation; must reconcile and address all argued grounds. |
| Whether Steigerwald anticipates '021 claims requiring "substantially uninterrupted" transformer power flow | SynQor: Steigerwald’s synchronous‑rectifier timing causes interruptions; Board relied on a new ground on rehearing and misapplied evidence | Vicor: Steigerwald discloses continuous coupling/flow; any brief switch transitions still satisfy "substantially uninterrupted" | Affirmed: substantial evidence supports Board’s anticipation finding; claimed "substantially uninterrupted" flow met by Steigerwald embodiment and Board’s reliance on examiner’s original findings was not prejudicial. |
Key Cases Cited
- Graham v. John Deere Co., 383 U.S. 1 (1966) (sets the four Graham factors for obviousness analysis)
- SynQor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365 (Fed. Cir. 2013) (affirming jury verdict of nonobviousness and discussing secondary considerations nexus to IBA)
- Vicor Corp. v. SynQor, Inc., [citation="603 F. App'x 969"] (Fed. Cir. 2015) (SynQor II) (held a Steigerwald combination anticipated a representative IBA claim; vacated Board nonobviousness findings)
- Apple Inc. v. Int'l Trade Comm'n, 725 F.3d 1356 (Fed. Cir. 2013) (requires considering all Graham factors, including secondary considerations, before deciding obviousness)
- Local 814, Int'l Bhd. of Teamsters v. N.L.R.B., 512 F.2d 564 (D.C. Cir. 1975) (agency must explain inconsistent outcomes in similar cases)