Synqor, Inc. v. Vicor Corporation ( 2023 )

Case: 21-2211 Document: 40 Page: 1 Filed: 01/18/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SYNQOR, INC.,
Appellant
v.
VICOR CORPORATION,
Appellee
______________________
2021-2211
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,861.
______________________
Decided: January 18, 2023
______________________
STEVEN J. HOROWITZ, Sidley Austin LLP, Chicago, IL,
argued for appellant. Also represented by THOMAS D. REIN,
PAUL J. ROGERSON; MICHAEL D. HATCHER, Dallas, TX.
MATTHEW A. SMITH, Smith Baluch LLP, Washington,
DC, argued for appellee. Also represented by ELIZABETH A.
LAUGHTON.
______________________
Before MOORE, Chief Judge, TARANTO and CHEN, Circuit
Judges.
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2 SYNQOR, INC. v. VICOR CORPORATION
CHEN, Circuit Judge.
In 2017, we affirmed-in-part, vacated-in-part, and re-
manded the Patent Trial and Appeal Board’s (Board) deci-
sion in an inter partes reexamination of U.S. Patent No.
8,023,290 (’290 patent). Vicor Corp. v. SynQor, Inc., 869
F.3d 1309, 1312 (Fed. Cir. 2017) (SynQor III). On remand,
the Board held all of the ’290 patent’s claims unpatentable
under 35 U.S.C § 103 over two different combinations of
references. Because the Board’s fact findings are sup-
ported by substantial evidence and its unpatentability de-
termination is correct as to the second combination of
references, we affirm.
BACKGROUND
The ’290 patent is entitled “High Efficiency Power Con-
verter” and claims a system for DC-DC power conversion—
i.e., converting a direct current (DC) source from one volt-
age level to another. ’290 patent col. 17 l. 9 – col. 18 l. 35.
The ’290 patent is part of a patent family owned by SynQor,
Inc. (SynQor) involving DC-DC conversion, and we have
previously discussed that technology in SynQor III. See
869 F.3d at 1312–15. The ’290 patent family describes a
“two-stage architecture” for DC-DC converters, which
SynQor refers to as “Intermediate Bus Architecture” (IBA).
Id. at 1314. The ’290 patent claims a particular type of IBA
converter implemented using switching regulators. Id.;
’290 patent col. 17 ll. 26–30.
In SynQor III, we reviewed the Board’s decision affirm-
ing an examiner’s reexamination decision withdrawing six
proposed rejections of the ’290 patent and vacated and re-
manded with respect to four proposed rejections: (i) two
rejections based on a combination of JP ’446 1 and Stei-
gerwald ’539 2 (Rejections III and IV), and (ii) two rejections
1 Japanese Patent App. Pub. No. H05-64446.
2 U.S. Patent No. 5,274,539.
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SYNQOR, INC. v. VICOR CORPORATION 3
based on a combination of Steigerwald ’090 3 and Press-
man 4 (Rejections V and VI). 869 F.3d at 1320–24. We in-
structed the Board to consider SynQor’s secondary
considerations evidence for nonobviousness in light of a
previous SynQor decision by our court that held that claims
of a SynQor patent related to the ’290 patent and directed
to “IBA’s basic arrangement” were anticipated. Id. at 1322
(citing Vicor Corp. v. SynQor, Inc., 603 F. App’x 969, 975
(Fed. Cir. 2015) (SynQor II)). More specifically, we in-
structed the Board to consider whether SynQor’s secondary
considerations evidence “is attributable to IBA—as antici-
pated in SynQor II—or to other features in the SynQor Pa-
tents’ claims.” Id. We observed that SynQor II might be
“particularly relevant for the proposed rejections . . . given
SynQor’s almost singular focus on IBA as a general concept
in its prior arguments before the Board on the [secondary
considerations] evidence.” Id.On remand, the Board reversed the examiner’s with-
drawal decision, found no nexus between SynQor’s second-
ary considerations evidence and the claims of the ’290
patent, and entered new grounds of rejection for claims 1–
15 based on proposed Rejections III–VI. J.A. 17246–48,
J.A. 17253–56. In view of the new rejections, SynQor re-
quested that the examiner reopen prosecution. J.A. 17357–
419. After considering SynQor and Vicor Corp.’s (Vicor) re-
marks regarding inter alia obviousness, the examiner
maintained the Board’s obviousness rejections of claims 1–
15 based on Rejections III–VI. J.A. 17954.
The Board subsequently affirmed the examiner’s deter-
mination as to claims 1–15, finding that the prior art ref-
erences set forth in Rejections III–VI taught all the
limitations of the claims and that a skilled artisan would
3 U.S. Patent No. 5,377,090.
4 Abraham I. Pressman, Switching and Linear
Power Supply, Power Converter Design (1977).
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4 SYNQOR, INC. v. VICOR CORPORATION
have been motivated to combine the references. J.A. 52–
67, 71–87, 91–96. After reconsidering the secondary con-
siderations evidence in view of SynQor’s additional re-
marks, the Board nonetheless found no nexus between
such evidence and the claimed invention. J.A. 67–71, 87–
90. Accordingly, the Board found that Vicor’s evidence of
obviousness outweighed SynQor’s evidence of nonobvious-
ness. J.A. 71, 90.
SynQor timely appealed the Board’s decision. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s ultimate obviousness determi-
nation de novo and its underlying factual findings for sub-
stantial evidence. PersonalWeb Techs., LLC v. Apple, Inc.,
917 F.3d 1376, 1381 (Fed. Cir. 2019) (citation omitted).
Relevant here, factual findings underlying an obvious-
ness determination include: (1) whether a skilled artisan
would have been motivated to modify the teachings of a ref-
erence, and (2) whether there is a nexus between secondary
considerations of nonobviousness and the claimed inven-
tion. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327, 1331–
32 (Fed. Cir. 2016). A patentee may establish nexus by
showing that the secondary considerations evidence is a
“direct result of the unique characteristics of the claimed
invention.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d
1366, 1373–74 (Fed. Cir. 2019) (quoting In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996)). For patents claiming com-
binations of prior art features, a patentee must show that
the secondary considerations evidence is “attributable to
the claimed combination of [prior art features], as opposed
to, for example, prior art features in isolation or unclaimed
features.” Id. at 1378 (citing Ethicon Endo-Surgery, Inc. v.
Covidien LP, 812 F.3d 1023, 1034 (Fed. Cir. 2016)).
SynQor argues the Board: (1) erred in declining to ap-
ply issue preclusion to Rejections III and IV, Appellant’s
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SYNQOR, INC. v. VICOR CORPORATION 5
Br. 29–40; (2) improperly relied on conclusory assertions
regarding the knowledge of a skilled artisan as to Rejec-
tions III and IV, id. 41–54; (3) failed to articulate a motiva-
tion to combine for Rejections V and VI, id. 54–66; and (4)
erred in evaluating the secondary considerations evidence,
id. 66–74. We disagree with SynQor as to its third and
fourth arguments regarding Rejections V and VI and sec-
ondary considerations. Because our decision on these ar-
guments resolves the parties’ dispute as to claims 1–15, we
do not address SynQor’s remaining arguments.
I. Rejections V and VI: Obviousness over
Steigerwald ’090 and Pressman
The Board found, and SynQor does not challenge, that:
(1) Steigerwald ’090 discloses each limitation of claim 1, ex-
cept that it discloses “series regulators” instead of the
claimed “switching regulators,” and (2) Pressman discloses
the missing “switching regulators.” J.A. 76, 79. The Board
determined that a skilled artisan would have been moti-
vated to modify Steigerwald ’090’s circuit using Pressman’s
switching regulators for certain circuit outputs—the non-
pulsed bias voltage outputs “used for control and receive
functions.” J.A. 79–80, 87; see also id. 79–86. The Board
reasoned that using switching regulators for the non-
pulsed bias voltage outputs would “improve efficiency as
taught by Pressman” “relative to linear [i.e., series 5]
5 The Board’s opinion uses the terms “linear regula-
tors” and “series regulators” interchangeably. Compare
J.A. 64 (referring to Steigerwald ’090’s regulators 50, 51,
60, and 61 as “linear regulators”), with J.A. 76, 79 (refer-
ring to Steigerwald ’090’s regulators 50, 51, 60, and 61 as
“series regulators”). To the extent the Board’s opinion re-
fers to linear regulators, we understand it to refer to Stei-
gerwald ’090’s series regulators.
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6 SYNQOR, INC. v. VICOR CORPORATION
regulators when used in Steigerwald ’090’s configuration.”
J.A. 79–81, 86. Substantial evidence supports this finding.
Specifically, the Board’s finding is supported by Press-
man itself and by the testimony of Dr. Vinciarelli, Vicor’s
expert. Pressman discloses a circuit that uses a “switching
postregulator.” Pressman at 82–83, Fig. 3–4B. Pressman
teaches that this circuit can “generate a multiplicity of dif-
ferent output voltages at high efficiency” due to “the use of
switching postregulators” and that this efficiency could not
be achieved with “series-pass postregulators.” Pressman
at 83 (emphasis added). Dr. Vinciarelli, in turn, explains
that Pressman’s series-pass regulators are “equivalent to”
Steigerwald ’090’s series regulators. J.A. 17753–54 ¶ 8.
Thus, Pressman provides an express motivation to combine
the two references by teaching that its switching regula-
tors, which can be used in place of Steigerwald’s ’090 series
regulators, improve efficiency.
SynQor makes four arguments on appeal, but two are
unpersuasive and two are forfeited. First, SynQor argues
that the Board’s analysis failed to explain why a skilled ar-
tisan would have been motivated to select Steigerwald ’090
and Pressman for combination. Appellant’s Br. 55–56,
58–61, 64–66 (citing WBIP, 829 F.3d at 1337). But it is
undisputed that (1) the claims and Steigerwald ’090 are
analogous art, both directed to two-stage DC-DC convert-
ers, and (2) Pressman discloses a benefit to using switching
regulators in a two-stage DC-DC converter circuit—such as
those disclosed in Steigerwald ’090—to improve efficiency.
As such, the Board articulated a valid motivation to com-
bine, and no further explanation is required. See Polaris
Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1070–71
(Fed. Cir. 2018) (citing WBIP, 829 F.3d at 1337).
Second, SynQor argues that adding switching regula-
tors to the non-pulsed bias voltage outputs would not im-
prove the efficiency of Steigerwald ’090’s circuit because
bias voltages draw almost no power. Appellant’s Br. 63–64
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SYNQOR, INC. v. VICOR CORPORATION 7
(citing J.A. 17489–90 ¶¶ 31–32). We have reviewed
SynQor’s cited expert testimony, but find little support for
SynQor’s attorney argument. See J.A. 17489–90 ¶¶ 31–32.
SynQor’s remaining two arguments were not presented
to the Board: (1) skilled artisans would not have been mo-
tivated to select Steigerwald ’090’s circuit for modification
because two-stage architectures had been discredited, Ap-
pellant’s Br. 57–58; and (2) Pressman teaches away from
using a two-stage architecture, id. 61–62, 65. SynQor for-
feited these arguments by not first raising them to the
Board, and we decline to address these fact-bound conten-
tions in the first instance. See In re Google Tech. Holdings
LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (explaining that an
argument not presented to the tribunal under review is for-
feited absent exceptional circumstances).
Accordingly, substantial evidence supports the Board’s
finding that a skilled artisan would have been motivated to
combine Steigerwald ’090 and Pressman.
II. Secondary Considerations
We agree with the Board that SynQor’s secondary con-
siderations evidence is not tied to the claimed combination
of features in the ’290 patent—i.e., an IBA converter using
switching regulators. Instead that evidence is associated
with IBA without any requirement for switching regula-
tors. 6 The Board relied on SynQor’s expert, Dr. Schlecht,
6 The record shows that SynQor’s understanding of
“IBA” does not require using switching regulators, given
that it refers to “IBA” to describe its patent claims across
multiple patents collectively, including claims that do not
recite switching regulators. See, e.g., J.A. 1199–1200,
1212, 1242 (discussing secondary considerations evidence
related to the ’290 patent and U.S. Patent Nos. 7,072,190
and 7,272,021), 18052 (“[A]ll the ’290 Patent claims require
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8 SYNQOR, INC. v. VICOR CORPORATION
who testified that certain indicia of secondary considera-
tions—e.g., commercial success, skepticism, widespread
adoption, and industry praise—were due to aspects of IBA
unrelated to switching regulators. See Declaration of Mar-
tin F. Schlecht, Sc.D., filed May 2, 2012 in Reexamination
Control No. 95/001,861, ¶¶ 59, 61, 63, 109, 112, 114; J.A.
88 (citing J.A. 17246–47). We agree with the Board’s as-
sessment that Dr. Schlecht’s testimony only ties the sec-
ondary considerations evidence to IBA converters without
any discussion as to the significance of switching regula-
tors, and thus there is no nexus.
SynQor’s arguments fail because it has not shown that
its relied-on success, skepticism, adoption, or praise, etc.,
were a “direct result of the unique characteristics of the
claimed invention”—in this case, were “attributable to the
claimed combination of [prior art features], as opposed to,
for example, prior art features in isolation or unclaimed
features.” Fox Factory, 944 F.3d at 1373–74, 1378 (citation
omitted). We do not discern any showing by SynQor on ap-
peal before this court or in the Board proceeding that there
was a nexus between its secondary considerations evidence
and the claimed combination of features in the ’290 pa-
tent—i.e., an IBA converter using switching regulators.
See Appellant’s Br. 68–74; J.A. 17416–19, 18050–53. 7 The
the regulation stages to be switching regulators whereas
the anticipated ’190 Patent claims and ’021 Patent claims
are more broadly worded to allow all types of non-isolating
regulation stages.”).
7 Before the Board, SynQor argued that it was enti-
tled to a presumption of nexus, but it does not argue this
now on appeal. J.A. 17417–18, 18052–53. Relatedly,
SynQor argues for the first time in its reply brief that its
secondary considerations evidence was “reasonably com-
mensurate” with the claims of the ’290 patent. Appellant’s
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SYNQOR, INC. v. VICOR CORPORATION 9
only evidence before the Board was that the secondary con-
siderations evidence was tied to aspects of IBA unrelated
to switching regulators.
CONCLUSION
We have considered SynQor’s remaining arguments
and find them unpersuasive. For the foregoing reasons,
substantial evidence supports the Board’s fact findings
that a skilled artisan would have been motivated to com-
bine Steigerwald ’090 and Pressman and SynQor’s second-
ary considerations evidence lacks an adequate nexus with
the ’290 patent claims. We therefore affirm the Board’s de-
cision.
AFFIRMED
Reply Br. 31. SynQor did not make either of these argu-
ments in its opening brief, and thus these arguments are
waived. See SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1319 (Fed. Cir. 2006) (“[A]rguments not
raised in the opening brief are waived.”).