Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in SynQor Inc. v. Vicor Corp., No. 2019-1704 (February 22, 2021), holding collateral estoppel (a/k/a issue preclusion) applies to decisions of the Patent Trial and Appeal Board in inter partes reexamination proceedings. Judge Hughes, writing for the majority, held reexamination offers “adequate adversarial participation” for both sides — provided the procedures used in the prior proceeding were not “fundamentally poor, cursory, or unfair” and the issues remain mostly the same as between the earlier and later proceedings.
SynQor asserted U.S. Patent Nos. 7,072,190 (“the ’190 patent”), 7,564,702 (“the ’702 patent”), and 8,023,290 (“the ’290 patent”) against Vicor. In response, Vicor petitioned for reexamination of all three patents, which are part of a family of patents directed to DC-DC power converters used in large computer systems. Vicor argued the claims were unpatentable over two references—Steigerwald and Cobos. SynQor argued a skilled artisan would not have combined those references due to incompatibilities in frequency.
During reexamination of the ’702 patent and the ’290 patent, the Board held the challenged claims were not unpatentable, in part because incompatibilities in frequency as between Cobos and Steigerwald prevented their combination. SynQor earlier appealed those decisions, and the Federal Circuit affirmed.
In the reexamination of the ’190 patent, however, the Board reached the opposite result. The Board concluded the challenged claims of the ’190 patent were unpatentable in view of the combination of Steigerwald and Cobos. The Board explained “the evidence points strongly to the lack of a frequency range discrepancy between Cobos and Steigerwald.” SynQor appealed.
On review, the Federal Circuit, relying on B&B Hardware, held collateral estoppel applies “[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.” Noting it had previously held, in Papst Licensing, that collateral estoppel applies to inter partes reviews, the Court determined it applies to inter partes reexamination as well. The Court explained the “statutory scheme governing inter partes reexaminations is fully consonant with common law estoppel.” The Court further held the facts of the case before it supported application of issue preclusion, and vacated the Board’s judgment of unpatentability.
Judge Dyk dissented.