CAFC Vacates and Remands Inconsistent PTAB Rulings of SynQor Patents

  • Oct 23 2017
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  • Category: News

In September, the Court of Appeals for the Federal Circuit (CAFC) ordered the Patent Trial and Appeal Board (PTAB) to review its rulings regarding power converter patents held by SynQor Inc. In Vicor Corp. v. SynQor, the CAFC affirmed and reversed what it called inconsistent obviousness determinations involving two inter partes reexaminations concerning similar inventions.

The Backdrop

SynQor and Vicor both design and manufacture power conversion products and systems that have a number of commercial and military applications. In particular, SynQor owns a number of patents for DC-DC power conversion, and Vicor initiated the inter partes proceedings underlying this case in 2011.

The PTAB affirmed a patent examiner’s decision in one proceeding, finding all the SynQor claims were patentable. In the other, the board upheld a decision rejecting certain claims as being anticipated and others as being obvious. SynQor then asked for a rehearing, arguing that its claims for improved power architecture for large computer systems were not obvious. However, the board found that there was significant evidence indicating otherwise. After the PTAB rulings, SynQor and Vicor filed separate appeals with the Federal Circuit.

The Federal Circuit Ruling

The CAFC vacated parts of both rulings and remanded them to the board, noting several factors including (1) the various inconsistencies between the decisions, (2) the fact that the patents cover similar inventions and (3) the cases were decided by the same panel of PTAB judges.

The Court said that the second decision was inconsistent with the board’s other re-exam, where it found SynQor’s evidence to be so persuasive to find the claims were patentable, without analyzing relevant factors. Additionally, the Federal Circuit said the board held that it would not have been obvious to combine elements of the prior art to arrive at SynQor’s invention in the first case, but came to a different conclusion in the other case. Finally, the appeals court also found that the board’s decision did not follow a 2015 Federal Circuit ruling in a patent infringement lawsuit regarding another SynQor patent (in which Vicor was not a party).

“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 re-examinations,” said the Court.

The Takeaway

Although the appeals court reversed and remanded these findings, parts of the two board decisions were left in place, including the rejection of claims in one patent as anticipated. Going forward, Synqor will now have to defend the upheld patent against arguments that its claims are obvious. Whether the company will prevail in its efforts remains to be seen. In the meantime, this case highlights how crucial it is for businesses to rely on experienced patent attorneys when introducing new products to the marketplace.