CAFC reverses PTAB in Vicor case

In Vicor v. Synqor , the CAFC reverses/vacates a decision of the PTAB (2014-00173) , which decision had reversed an Examiner's rejections. The more frequent outcome is PTAB affirming the Examiner, and the CAFC affirming PTAB, so the Vicor sequence is atypical.


As to anticipation, the CAFC cited Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000).
Other material may be considered as part of the single document if the host
document incorporates it by reference.

A host document incorporates material by reference if
it “identif[ies] with detailed particularity what specific
material it incorporates and clearly indicate[s]
where that material is found in the various documents.”
Id. Whether the host document describes
the material with sufficient
particularity is determined from the
point of view of a person of reasonable skill
in the art.Id.at 1283.

An issue was whether or not "incorporation by reference"
had been properly effected:

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On appeal, SynQor asserts that, although Steigerwald '090
expressly incorporates Steigerwald ’539, it fails to
identify specific portions of Steigerwald ’539’s
teaching with the “detailed particularity”
required for incorporation.
If Steigerwald ’090 incorporates Steigerwald ’539’s
text, SynQor contends that the combined reference
does not anticipate because it does
not teach applying Steigerwald ’539’s substitution
of controlled rectifiers for
diodes to Steigerwald ’090’s embodiment.
We reject both arguments.

As the examiner observed,
the two patents teach an isolation stage that is “nearly
identical.”
Right of Appeal Notice, Reexamination No.
95/001,702, at 9 (Nov. 26, 2011).


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