PTAB Failure to Explain Inconsistencies Between Proceedings Warrants Vacatur
Vicor Corp. v. SynQor, Inc., (Fed. Cir. Aug. 30, 2017) (Lourie, Taranto, CHEN) (PTAB) (3 of 5 stars)
In related appeals, Fed Cir part-affirms, part-vacates PTAB’s IPRx determination that some of SynQor’s claims from two patents were patentable, others anticipated or obvious. The opinion groups discussion by reexamined patent and by grounds of rejection.
As to the first group of proposed grounds of rejection for the first patent, substantial evidence supported the Board’s decision not to adopt the proposed grounds, as there was sufficient evidence in the record to indicate that a person of skill would not have been motivated to combine the cited references in the required manner.
As to the second group of proposed rejections, the Board erred in affirming the examiner’s withdrawal of rejections “based solely on SynQor’s proffered objective evidence of nonobviousness.” Op. at 20. The Board should have considered all the Graham factors, not just the objective evidence. Second, the Board’s apparent assessment of the secondary considerations here was inconsistent with how it treated secondary considerations evidence in reexamination of two other SynQor patents, “without any explanation to justify such inconsistency.” Id. at 21. The opinion also discusses how prior appellate proceedings regarding secondary considerations as relating to SynQor’s patents, and a remand therefrom, necessitated giving the parties an opportunity on remand to address the issues from that prior appeal.
As to the third group of proposed rejections, the Board erred in finding that a certain combination of prior art elements was non-obvious, as “on the same day, the Board reached the opposite conclusion on this issue in [another SynQor] reexamination on essentially the same record.” Op. at 24. Vacatur is necessary because the Board failed to explain its inconsistent results. The opinion discusses some of the Board’s apparent reasoning in declining to adopt the rejections from the separate reexamination and finds it lacking. “[T]he direct conflict between the Board’s fact findings in the reexaminations before us is unsupported by any rational explanation in either of the Board’s decisions.” Id. at 25. The opinion also concludes that the Board failed to address “all grounds for proposed rejection” presented by Vicor.
On the second patent, for the first proposed rejection, the Board correctly found the claims anticipated on the presented record. The opinion rejects SynQor’s arguments that there was a new ground of rejection being presented that affected the outcome, and that the Board misinterpreted the reference at issue.
For the second proposed rejection, the Board correctly found the claims obvious. The opinion rejects SynQor’s argument that the record demonstrated teaching away.
The third and fourth proposed rejections were among those suffering from inconsistent treatment between the two reexamination proceedings, and the Board’s treatment of them is vacated.
KEYWORDS: INTER PARTES REEXAMINATION; OBVIOUSNESS (YES); OBVIOUSNESS (NO); ANTICIPATION (YES)