Wednesday, August 30, 2017

CAFC finds PTAB inconsistent in its determinations in Vicor/Syncor matter

The CAFC decision in Vicor has interesting text on the front end:

We address these two appeals in a single opinion because
the two patents claim very similar inventions, and
their respective reexaminations share common patentability
issues. Both reexaminations were decided by the
same panel of administrative patent judges. The panel’s
decision in the ’290’s reexamination issued on the same
date as the panel’s decision on rehearing in the ’021’s
reexamination. Despite sharing a common panel and
having opinions issued on the same date, the decisions in
the respective reexaminations contain inconsistent findings
on identical issues
and on essentially the same
record. We affirm in part, vacate in part, and remand the
Board’s decisions in both reexaminations.1

There was an "incorporation by reference" issue in
prior proceedings:

We reversed in part, vacated in part, and remanded.
Vicor Corp. v. SynQor, Inc., 603 F. App’x 969, 970 (Fed.
Cir. 2015) (SynQor II). Steigerwald ’090, we held, incorporates
Steigerwald ’539 by reference, and the combined
reference discloses an alternative embodiment of a power
converting system having a non-regulating isolation stage
and a plurality of non-isolating regulation stages, in
which the uncontrolled rectifiers in Steigerwald ’090 are
replaced with controlled rectifiers from Steigerwald ’539.9
Id. at 974–75. We concluded that “[t]he combined reference
teaches a single embodiment that anticipates all
elements of representative claim 20” of the ’190 patent,
that is, a two-stage DC-DC power converter system having
a non-regulating isolation stage and a plurality of
non-isolating regulation stages. Id. We also vacated the
Board’s nonobviousness determinations of the remaining
claims, which relied in part on the same objective evidence
of nonobviousness discussed in SynQor I and submitted
to the Board in Murata, and remanded for further
consideration in light of our anticipation decision. Id.
Regarding the objective evidence of nonobviousness, we
instructed the Board to reconsider whether a nexus exists
between the proffered secondary considerations evidence
and the merits of the claimed invention in light of our
conclusion that representative claim 20 is anticipated:

Of the inconsistency issue:

The Board’s decision on these proposed rejections was
erroneous and must be vacated for two reasons. First, the
Board improperly analyzed Vicor’s obviousness arguments
under only one of the four Graham factors when it
looked exclusively at the objective evidence, without
considering the remaining factors and the relative
strength of the factors. Second, the Board reached inconsistent
conclusions as to the evidentiary weight to be
given to the secondary considerations evidence presented
in the respective reexaminations of the ’290 and ’021
patents, without any explanation to justify such inconsistency.
The Board’s legal error is underscored by its opinion
issued on the same day in the related reexamination of
the ’021 patent. In that decision, the Board applied all
four Graham factors in the ’021’s reexamination and
stated that “[t]he Federal Circuit has determined that
only after considering the four Graham criteria together
can the decision maker make the legal determination of
whether the invention is nonobvious.” -2288 J.A. 14
(citing Panduit v. Dennison Mfg. Co., 810 F.2d 1561, 1570
(Fed. Cir. 1987)).

The Supreme Court instructed that, in
performing an obviousness inquiry, “the scope and content
of the prior art are to be determined; differences between
the prior art and the claims at issue are to be ascertained;
and the level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or
nonobviousness of the subject matter is determined.”
Graham, 383 U.S. at 17. We have interpreted this mandate
to require that “evidence relating to all four Graham
factors—including objective evidence of secondary considerations—
must be considered before determining
whether the claimed invention would have been obvious
to one of skill in the art at the time of invention.”

2013) (emphasis added). The Board was clearly aware of
these requirements but nevertheless chose to affirm the
examiner rather than send the issue back with instructions
to consider Vicor’s obviousness arguments. This was

The Board’s decision is also erroneous because the
Board reached inconsistent conclusions regarding the
weight to be accorded the objective indicia evidence presented
in both reexaminations of the SynQor Patents.
the ’290’s reexamination, the Board found the objective
evidence to be so persuasive that it approved of the examiner’s
decision to withdraw rejections without analyzing
the remaining Graham factors and without considering
our holding in SynQor II that claims covering IBA’s basic
concept were anticipated by Steigerwald. In the ’021’s
reexamination, however, the Board determined that the
objective evidence principally related to features of the
claims that were found to be anticipated in SynQor II and,
therefore, found that there was no nexus between the
objective evidence and the claims of the ’021 patent. The
Board’s decisions do not evince any explanation or justification
for these inconsistent findings, given the similarity
between the claims at issue in the respective reexaminations.
While not every instance of an agency reaching
inconsistent outcomes in similar, related cases will necessarily
be erroneous, under the circumstances here, where
a panel simultaneously issues opinions on the same
technical issue between the same parties on the same
record, and reaches opposite results without explanation,
we think the best course is to vacate and remand these
findings for further consideration. See Local 814, Int’l
Bhd. of Teamsters v. N.L.R.B., 512 F.2d 564, 567 (D.C.
Cir. 1975) (remanding two decisions of the National Labor
Relations Board that were “factually similar and ostensibly
inconsistent” because the Board “ha[d] not explained
its reasons for reaching different results”).


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