Docket No. 2014-1578
TARANTO, MAYER, CLEVENGER
March 13, 2015
Brief Summary: “Combined reference” of patent and patent incorporated by reference held to anticipate claims, reversing Board decision of no anticipation. Board’s reversal of obviousness rejections were vacated and remanded.
Summary: Vicor appealed from PTAB reversal (April 10, 2014) of the examiner’s rejection of claims during inter partes reexamination of SynQor’s US 7,072,190 claims relating to a DC-to-DC power converter as anticipated or obvious. In an earlier DC case not involving Vicor, a jury found claims 2, 8, 10 and 19 infringed and not anticipated or obvious (affirmed, SynQor, Inc. v. Artesyn Techs. FC, 2013). And another inter partes reexamination confirmed the patentability of claims 1-33 after considering the prior art patents at issue in this case. Here, SynQor argued that “although Steigerwald ‘090 expressly incorporates Steigerwald ‘539, it fails to identify specific portions of Steigerwald ‘539’s teaching with the ‘detailed particularity’ required for incorporation” and, if it does incorporate properly, “the combined reference does not anticipate because it does not teach applying Steigerwald 539’s substitution of controlled rectifiers for diodes to Steigerwald ‘090’s embodiment.” Both of these arguments were rejected by the FC (“A person of ordinary skill in the art would have understood that Steigerwald ‘090 identifies the capacitance-multiplying converter in Steigerwald ‘539 with detailed particularity…We therefore hold that Steigerwald ‘090 incorporates by reference at least those teachings of Steigerwald ‘539 that relate to its capacitance-multiplying converter 20.”) SynQor’s arguments were also rejected because “teaching away is not relevant to an anticipation analysis” (Krippelz, FC 2012) and “the differences…would not stop a person of skill in the art from recognizing the overall identity between” the inventions. Thus, the FC held “[t]he combined reference teaches a single embodiment that anticipates all elements of representative claim 20” and “reverse[d] the Board’s conclusion to the contrary.” And since the “Board’s reversal of the obviousness rejections that involved the Steigerwald patents was premised on the conclusion that the combined reference did not anticipate those claims”, those rejections were reversed for further consideration in view of these conclusions.