In SynQor, Inc. v. Vicor Corp., Case No. 19-1704 (Fed. Cir. Feb. 22, 2021), the Federal Circuit vacated the inter partes reexamination decision from the Patent Trial and Appeal Board (the “Board”). As part of the decision, the court held that collateral estoppel (issue preclusion) can apply where the Board’s prior determinations involving different claims of related patents addressed the same issue(s).
In the PTAB’s inter partes reexamination decision, the Board held several original claims and newly-presented claims of the 7,072,190 patent (“the ’190 patent”) unpatentable as obvious. SynQor raised several arguments on appeal, but only two are of relevance in this discussion. Namely, in appealing the decision concerning the newly presented claims, SynQor argued the decision should be vacated because the patent had expired during the appeal process. As to the original claims, SynQor argued that common law issue preclusion arising from the Boards’ decisions in two patent family member reexamination proceedings collaterally estopped the Board from making its obviousness holding in the reexamination of the ’190 patent. Each is addressed, in turn, below.
On the obviousness of the newly-presented claims, the Federal Circuit found that the issue was moot. The Court reasoned that because newly-presented claims during reexamination do not go into effect unless a reexamination certificate incorporates them, and further because here a reexamination certificate could not amend the claims due to the ’190 patent’s expiration, the issue of whether the newly-presented claims were obvious or not was moot. See 37 C.F.R. § 1.520(j) (“[N]o amendment, other than the cancellation of claims, will be incorporated into the patent by a [reexamination] certificate issued after the expiration of the patent.”). Consequently, the Federal Circuit vacated the Board’s decision as to those claims.
On the original claims and the collateral estoppel issue, the Federal Circuit’s decision requires a bit of background. Importantly, two other patents in same family as the ‘190 patent were subject to reexamination proceedings, patent numbers 7,564,702 (“the ’702 patent”) and 8,023,290 (“the ’290 patent”). The same combination of prior art references, Steigerwald and Cobos, was presented in the reexamination proceedings of each of the three patents. In the ’702 patent and ’290 patent proceedings, the Board found the prior art references incompatible, and therefore determined the claims at issue were not unpatentable. The Federal Circuit affirmed each of those decisions. However, in the ’190 reexamination, the Board found the prior art references were compatible in its obviousness decision. The Board’s inconsistent treatment of the compatibility of the prior art references became the basis of the issue preclusion claims.
The Federal Circuit reviewed the applicable statutory provisions and determined that issue preclusion is available in inter partes reexaminations. The court noted that prior decisions had held that issue preclusion applies to inter partes reviews. The estoppel that results from inter partes reexamination indicated that issue preclusion should apply equally there also. The rights and procedures available in a reexamination proceeding met the requirements for issue preclusion to be available generally.
On the facts, the Federal Circuit held that the issues related to the prior art were the same in all three patent reexaminations. Because the Board had found the same prior art incompatible in the ’702 and ’290 reexamination, it could not now determine the opposite in the ’190 patent proceeding. Although the court determined it was not clear that the Board relied on new evidence to reach its different conclusion, the principles of collateral estoppel would still apply even if new evidence exists. This type of second bite at the apple is the interest in finality that collateral estoppel is intended to prevent. Therefore, the Federal Circuit vacated the Board’s decision on the original claims.