Thursday, January 19, 2023

Synqor loses at CAFC in appeal related to DC to DC conversion

In Synqor v. Vicor, the final result at the CAFC was:

In 2017, we affirmed-in-part, vacated-in-part, and remanded the Patent Trial and Appeal Board’s (Board) decision in an inter partes reexamination of U.S. Patent No. 8,023,290 (’290 patent). Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1312 (Fed. Cir. 2017) (SynQor III). On remand, the Board held all of the ’290 patent’s claims unpatentable under 35 U.S.C § 103 over two different combinations of references. Because the Board’s fact findings are supported by substantial evidence and its unpatentability determination is correct as to the second combination of references, we affirm.

The technology

The ’290 patent is entitled “High Efficiency Power Converter” and claims a system for DC-DC power conversion— i.e., converting a direct current (DC) source from one voltage level to another. ’290 patent col. 17 l. 9 – col. 18 l. 35. The ’290 patent is part of a patent family owned by SynQor, Inc. (SynQor) involving DC-DC conversion, and we have previously discussed that technology in SynQor III. See 869 F.3d at 1312–15. The ’290 patent family describes a “two-stage architecture” for DC-DC converters, which SynQor refers to as “Intermediate Bus Architecture” (IBA). Id. at 1314. The ’290 patent claims a particular type of IBA converter implemented using switching regulators. Id.; ’290 patent col. 17 ll. 26–30

Overview of arguments

We review the Board’s ultimate obviousness determination de novo and its underlying factual findings for substantial evidence. PersonalWeb Techs., LLC v. Apple, Inc., 917 F.3d 1376, 1381 (Fed. Cir. 2019) (citation omitted). Relevant here, factual findings underlying an obviousness determination include: (1) whether a skilled artisan would have been motivated to modify the teachings of a reference, and (2) whether there is a nexus between secondary considerations of nonobviousness and the claimed invention. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327, 1331– 32 (Fed. Cir. 2016). A patentee may establish nexus by showing that the secondary considerations evidence is a “direct result of the unique characteristics of the claimed invention.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019) (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). For patents claiming combinations of prior art features, a patentee must show that the secondary considerations evidence is “attributable to the claimed combination of [prior art features], as opposed to, for example, prior art features in isolation or unclaimed features.” Id. at 1378 (citing Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1034 (Fed. Cir. 2016)).

Of secondary considerations

SynQor’s arguments fail because it has not shown that its relied-on success, skepticism, adoption, or praise, etc., were a “direct result of the unique characteristics of the claimed invention”—in this case, were “attributable to the claimed combination of [prior art features], as opposed to, for example, prior art features in isolation or unclaimed features.” Fox Factory, 944 F.3d at 1373–74, 1378 (citation omitted). We do not discern any showing by SynQor on appeal before this court or in the Board proceeding that there was a nexus between its secondary considerations evidence and the claimed combination of features in the ’290 patent—i.e., an IBA converter using switching regulators.

Of waiver of arguments

SynQor did not make either of these arguments in its opening brief, and thus these arguments are waived. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006) (“[A]rguments not raised in the opening brief are waived.”). AND SynQor’s remaining two arguments were not presented to the Board: (1) skilled artisans would not have been motivated to select Steigerwald ’090’s circuit for modification because two-stage architectures had been discredited, Appellant’s Br. 57–58; and (2) Pressman teaches away from using a two-stage architecture, id. 61–62, 65. SynQor forfeited these arguments by not first raising them to the Board, and we decline to address these fact-bound contentions in the first instance. See In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (explaining that an argument not presented to the tribunal under review is forfeited absent exceptional circumstances).


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