April 19, 2021

Volume XI, Number 109


April 16, 2021

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Issue Preclusion Can Apply to Prior Inter Partes Reexamination Determinations

In SynQor, Inc. v. Vicor Corp., No. 2019-1704 (Fed. Cir. Feb. 22, 2021), a panel majority found that issue preclusion could apply to prior inter partes reexamination determinations, and that, in view of issue preclusion, the PTAB erred in holding unpatentable claims involved in a later inter partes reexamination. Judge Dyk dissented.

In 2011, SynQor asserted several patents against Vicor, including U.S. Patent 7,564,702 (’702 patent), 8,023,290 (’290 patent), and 7,072,190 (’190 patent), which are part of the same family. Vicor requested inter partes reexamination of all three, asserting that their claims were obvious in view of two references: Steigerwald and Cobos. In the ’702 and ’290 proceedings, the claims were held not unpatentable. The PTAB reasoned that Steigerwald and Cobos disclosed circuits operating at incompatible frequencies and their disclosures would not have been combined by a POSA. These determinations were affirmed by the Federal Circuit in earlier appeals. In the ’190 proceeding, the PTAB came to the opposite conclusion: Steigerwald and Cobos did not disclose incompatible frequencies, and the ’190 patent claims were unpatentable. SynQor appealed from that determination.

The panel majority vacated the PTAB’s determination in the ’190 proceeding. It first reasoned that the statutory scheme governing inter partes reexaminations showed no intent to foreclose issue preclusion. It then found the procedural mechanisms used in inter partes reexaminations, including the participation of the requester to provide both argument and evidence, made inter partes reexaminations sufficiently “adversarial” to justify the application of issue preclusion. In applying issue preclusion, the panel majority found that the PTAB’s earlier determination that a POSA would not have combined Steigerwald and Cobos had preclusive effect, and the PTAB could not come to a different conclusion in the ’190 proceeding.

Judge Dyk dissented. In his view, issue preclusion does not apply to inter partes reexaminations because they “are examinational (or inquisitorial) rather than adjudicatory, do not include court-like adjudicatory procedures, and do not satisfy the requirements in B&B Hardware, Inc. . . . for application of collateral estoppel.” Judge Dyk found “of critical importance” the lack of the “third-party requester’s ability to cross-examine the witness.”

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 63



About this Author

Eric Magleby Patent Attorney Finnegan

Eric Magleby focuses on patent prosecution and client counseling in the automotive, robotics, and consumer products industries. 

Eric’s prosecution experience covers numerous products in a variety of fields, including the automotive, consumer products, manufacturing, medical device, robotics, and sports and recreation industries. He advises clients through various stages of patent application prosecution, including drafting, responding to office actions, and examiner interviews. He also advises clients in infringement and invalidity claims....

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Sydney R. Kestle Patent Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Washington, DC

Sydney Kestle focuses on several areas of patent law, including pre-litigation due diligence, client counseling, litigation in U.S. district courts, and proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). Her patent practice covers several technology sectors in the mechanical and electrical arts, including industrial manufacturing, medical devices, and wireless communications and related consumer products. 

Sydney has an undergraduate degree in bioengineering, with a focus in biomechanics tissue engineering and material...

Elizabeth Ferrill Patent Attorney Finnegan Law Firm

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

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