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ARTICLE · 07 MARCH 2021

Issue Preclusion Can Apply To Prior Inter Partes Reexamination Determinations

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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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...

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Sydney Kestle
Sydney Kestle
Elizabeth Ferrill
Elizabeth Ferrill
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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

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