Thursday, February 25, 2021

CAFC vacates Board decision in SYNQOR, INC. v. VICOR CORPORATION

The outcome:

SynQor, Inc. appeals the inter partes reexamination decision of the Patent Trial and Appeal Board holding unpatentable as obvious original claims 1–19, 28, and 31 of SynQor’s patent, U.S. Patent No. 7,072,190, as well as newly presented claims 34–38, which were proposed during the reexamination proceeding. Because decisions the Board made in previous reexamination proceedings preclude finding claims 1–19, 28, and 31 obvious based on the grounds relied upon by the Board, we vacate the Board’s decision as to those claims. And because the expiration of the ’190 patent renders any appeal of the Board’s decision regarding claims 34–38 moot, we also vacate the Board’s decision as to those claims.

Of relevance to this case is the drawn out history:

The ’190 patent has a lengthy litigation history with multiple board decisions and appeals in this court. Only the portions relevant to this appeal are recited here

The issues:

SynQor makes four arguments on appeal. First, SynQor argues that common law issue preclusion arising from the ’702 and ’290 patent reexaminations should have collaterally estopped the Board from finding that an artisan would be motivated to combine Steigerwald and Cobos.1 Second, SynQor argues that the Board’s findings on the frequency (in)compatibility in the ’190 patent reexamination exhibit inadequately explained inconsistencies with the ’290 patent reexamination decision and within the two decisions issued in the ’190 patent reexamination, requiring vacatur under principles of administrative law. Third, SynQor argues that an additional obviousness ground under which the Board found claims 2–4 obvious, combining Steigerwald, Cobos, and a third reference, lacked substantial evidence that an artisan would combine Steigerwald with the third reference. Finally, SynQor argues that its appeal of the Board’s decision on newly presented claims 34–38 became moot through the happenstance of patent expiration, so the Board’s decisions regarding those claims should therefore be vacated

footnote 1: Vicor argues that SynQor forfeited its issue preclusion argument by not raising it before the Board despite having the opportunity to do so. Appellee’s Br. 30. But SynQor could not have raised issue preclusion because neither the ’702 nor ’290 patent reexaminations became final until after the Board’s decision regarding claims 1–19, 28, and 31. “[I]ssue preclusion applies even though the precluding judgment . . . comes into existence while the case as to which preclusion is sought (this case) is on appeal.” MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018) (quoting Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1315 (Fed. Cir. 2015)).

As to issue preclusion:

“[T]he determination of a question directly involved in one action is conclusive as to that question in a second suit.” B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 147 (2015) (quoting Cromwell v. County of Sac, 94 U.S. 351, 354 (1877)). “It is well established that collateral estoppel, also known as issue preclusion, applies in the administrative context.” MaxLinear, Inc., 880 F.3d at 1376. In fact, “because the principle of issue preclusion was so ‘well established’ at common law, in those situations in which Congress has authorized agencies to resolve disputes, ‘courts may take it as given that Congress has legislated with the expectation that the principle [of issue preclusion] will apply ‘except when a statutory purpose to the contrary is evident.’” B & B Hardware, 575 U.S. at 148 (quoting Astoria Fed. Sav. & Loan Ass’n v. Solimino, 501 U.S. 104, 108 (1991))

Thus, administrative decisions have preclusive effect “[w]hen an administrative agency is acting in a judicial capacity and resolves disputed issues of fact properly before it which the parties have had an adequate opportunity to litigate.” B & B Hardware, 575 U.S. at 148–49 (quoting Univ. of Tenn. v. Elliott, 478 U.S. 788, 797–98 (1986)). “Although administrative estoppel is favored as a matter of general policy, its suitability may vary according to the specific context of the rights at stake, the power of the agency, and the relative adequacy of agency procedures.” Astoria, 501 U.S. at 109–10.

[As a small diversion, this issue arose in a comment by Josh Escovedo in a Weintraub CLE on Feb. 25, 2021.]


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