A Stitch In Time Saves Nine, Unless It Doesn't

Published date03 August 2022
Subject MatterIntellectual Property, Patent
Law FirmFinnegan, Henderson, Farabow, Garrett & Dunner, LLP
AuthorMs Angeline Premraj, Amanda Murphy and Stacy Lewis


In SynQor, Inc. v. Vicor Corp., No. 20-1259 (Fed. Cir. June 17, 2022) (non-precedential), the Court of Appeals for the Federal Circuit vacated the decision of the Patent Trial and Appeal Board upholding a rejection of claims 49 and 50 of U.S. Pat. No. 7,272,021 ("the '021 patent").


SynQor sued Vicor for infringement, and then Vicor filed a request for inter partes reexamination of several patents, including the '021 patent and a related patent, U.S. Patent No. 7,072,190 ("the '190 patent").1 Inter partes reexamination was granted on both patents, with the reexamination of the '190 patent proceeding to final resolution first. The examiner rejected all challenged claims of the '190 patent, including claims 34-38 that SynQor sought to add during reexamination. Id. at *2. The Board reversed, and then the Federal Circuit reversed-in-part, vacated-in-part, and remanded "for the Board to consider the examiner's obviousness rejections in light of our conclusion that a prior art patent, incorporating another prior art patent by reference, anticipated claims 20-23, 27, 29, 30, 32, and 33." Id. at *3.

On remand, the Board affirmed the examiner's rejection except with respect to claim 34, for which the Board entered a new ground of rejection. Id. SynQor then reopened prosecution before the examiner, after which the case again made its way to the Board. Before the Board issued a decision on claim 34, the '190 patent expired, but the Board still went on to issue a final decision affirming the new rejection. Id.

SynQor appealed that decision, which the Federal Circuit vacated "because 'the '190 patent expired before the appeals of the patentability of claims 34-38 terminated,' meaning that 'the claims will never issue,' and the Board's patentability determinations were unreviewable for mootness." Id. (quoting SynQor, Inc. v. Vicor Corp., 988 F.3d 1341 (Fed. Cir. 2021) ("SynQor IV")).

The challenged claims of the '021 patent at issue in this case were also rejected in inter partes reexamination, including claims 49 and 50 that SynQor sought to add during reexamination. Id. at *4. The Board affirmed the examiner's rejection, and the Federal Circuit affirmed-in-part, vacated-in-part, and remanded "for the Board to reconsider two obviousness grounds for which the Board had, without explanation, reached inconsistent conclusions in a separate reexamination proceeding for another related patent." Id. Before the Board issued its remand decision, the '021...

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