Digest of Vicor Corp. v. Synqor Inc., No. 2014-1578 (Fed. Cir. March 13, 2015) (nonprecedential). On appeal from the Patent Trial and Appeal Board in Serial No. 95/001,702. Before Taranto, Mayer, and Clevenger.
Procedural Posture: Third-party requestor appealed the Board’s decision reversing the Examiner’s finding of anticipation and obviousness after inter partes reexamination. CAFC reversed as to the anticipation rejection and vacated and remanded each obviousness rejection.
- Anticipation: The CAFC held that the combined reference of two prior art patents anticipated all elements of the representative claim, and thus it reversed the Board’s decision to the contrary. Both prior art references taught DC-to-DC power converters, and the first prior art reference was cited and incorporated by reference in the second prior art reference. The patent holder argued that even if the second prior art reference expressly incorporated the first prior art reference, it failed to identify specific portions of the first prior art’s teaching with the “detailed particularity” required for incorporation. The patent holder also argued that the combined reference did not anticipate because it did not teach applying the first prior art’s substitution of controlled rectifiers for diodes to the second prior art’s embodiment. The CAFC rejected both of these arguments. As the Examiner had properly observed, “the two patents teach an isolation stage that is ‘nearly identical.’” A person of ordinary skill in the art would have understood that the second prior art reference identified the capacitance-multiplying converter in the first prior art reference with detailed particularity. Further, the CAFC rejected the patent holder’s attempts to highlight differences between the circuits’ induction stages in the two prior art patents. As the CAFC noted, teaching away is not relevant to an anticipation analysis. In addition, the CAFC found that the differences the patent holder identified in the inventions’ isolation stages occurred at their periphery and would not stop a person of skill in the art from recognizing the overall identity between them.
- Obviousness: In light of its decision that the combined reference anticipated certain claims of the patent, the CAFC vacated and remanded each of the Board’s obviousness rejections for further consideration. The Board reversed the obviousness rejection based on erroneous holding that certain claims were not anticipated. In light of the CAFC’s finding of anticipation, the teachings of the combined reference may be relevant to any objective evidence of nonobviousness.