Vicor Corporation v. Synqor, Inc. , 603 F. App'x 969 ( 2015 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VICOR CORPORATION,
Appellant
v.
SYNQOR, INC.,
Appellee
______________________
2014-1578
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,702.
______________________
Decided: March 13, 2015
______________________
MATTHEW A. SMITH, Turner Boyd LLP, Redwood City,
CA, argued for appellant.
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi-
cago, IL, argued for appellee. Also represented by JILL
BROWNING, ARNOLD TURK, GARY V. HARKCOM, BRUCE
HAROLD STONER, JR., Greenblum & Bernstein, P.L.C.,
Reston, VA.
______________________
2 VICOR CORPORATION v. SYNQOR, INC.
Before TARANTO, MAYER, and CLEVENGER, Circuit
Judges.
CLEVENGER, Circuit Judge.
This appeal is from an inter partes reexamination of
U.S. Patent No. 7,072,190 (“the ’190 patent”), owned by
SynQor, Inc. (“SynQor”). The examiner rejected claims 20-
23, 27, 29, 30, 32, and 33 as anticipated by two prior art
patents to Steigerwald, all but one remaining claims as
obvious over the Steigerwald patents in view of other
references, and all claims as obvious over other refer-
ences. The Patent Trial and Appeal Board (“Board”)
reversed all rejections, Vicor Corp. v. SynQor, Inc., No.
2014-001733 (P.T.A.B. Apr. 10, 2014), and third-party
requestor Vicor Corporation (“Vicor”) appeals.
We reverse as to the anticipation rejection and vacate
and remand each obviousness rejection.
BACKGROUND
I
A
The ’190 patent, entitled “High Efficiency Power Con-
verter,” issued on July 4, 2006, and claims priority to an
application filed January 23, 1998.
It describes a direct current-to-direct current (“DC-to-
DC”) power converter that takes direct current power as
input and outputs direct current at a different voltage
level. The claimed invention accomplishes this conversion
using two stages: an isolation stage, followed by a plurali-
ty of regulation stages. The invention’s isolation stage
uses what the patent sometimes calls controlled rectifiers
and sometimes calls synchronous rectifiers. See, e.g., ’190
Patent col.6 ll.22-41. Any difference between the terms is
immaterial for present purposes.
VICOR CORPORATION v. SYNQOR, INC. 3
The ’190 patent issued with 33 claims, of which claims
1, 20, 27, 30, and 33 are independent. During this reex-
amination, SynQor amended its claims to add dependent
claims 34-38.
Claim 20 is the patent’s broadest system claim:
A power converter system comprising:
a DC power source;
a non-regulating isolation stage comprising:
a primary transformer winding circuit having at
least one primary winding connected to the
source; and
a secondary transformer winding circuit having at
least one secondary winding coupled to the at
least one primary winding and having plural con-
trolled rectifiers, each having a parallel uncon-
trolled rectifier and each connected to a secondary
winding, each controlled rectifier being turned on
and off in synchronization with the voltage wave-
form across a primary winding to provide an out-
put; and
a plurality of non-isolating regulation stages, each
receiving the output of the isolation stage and
regulating a regulation stage output.
The ’190 patent has been the subject of both infringe-
ment litigation before this court and a prior inter partes
reexamination. Vicor was not a party to either proceeding.
In SynQor, Inc. v. Artesyn Technologies, Inc., the jury
found that claims 2, 8, 10, and 19 were infringed and were
not invalid as anticipated or obvious, and the trial court
denied judgment as a matter of law. No. 2:07-CV-497-
TJW-CE, 2011 WL 3625051 (E.D. Tex. Aug. 17, 2011).
This court affirmed, holding that sufficient evidence
supported the jury’s finding that the asserted prior art did
4 VICOR CORPORATION v. SYNQOR, INC.
not teach or suggest a converter with “a plurality of non-
isolated regulation stages.” 709 F.3d 1365, 1374-75 (Fed.
Cir. 2013), cert. denied, 134 S. Ct. 648 (SynQor I). 1
Inter Partes Reexamination No. 95/001,207 confirmed
the patentability of claims 1-33 in a certificate issued
September 15, 2014. The examiner considered the two
Steigerwald patents at issue here, among other refer-
ences. Information Disclosure Statement by Patentee,
Reexamination No. 95/001,207 (May 8, 2014).
B
Two prior art patents to Steigerwald et al. are at is-
sue: U.S. Patent No. 5,274,539 (filed Dec. 4, 1991) (“Stei-
gerwald ’539”) and U.S. Patent No. 5,377,090 (filed Jan.
19, 1993) (“Steigerwald ’090”).
Both patents teach DC-to-DC power converters and
are directed to similar fields of invention, specifically,
power converters for supplying pulsed loads. Steigerwald
’090 cites Steigerwald ’539 as a related patent and incor-
porates it by reference as follows:
This application is related to commonly assigned
U.S. Pat. No. 5,274,539 of R. L. Steigerwald and
R. A. Fisher, issued Dec. 28, 1993, and to common-
ly assigned abandoned U.S. patent application
Ser. No. 811,631 of R. L. Steigerwald, filed Dec.
1 Defendants presented evidence about Steigerwald
’090 during the trial, but jurors were instructed to disre-
gard testimony about its relationship to the ’190 patent’s
claims. Transcript of Jury Trial at 43-50, SynQor, Inc. v.
Artesyn Techs., Inc., No. 2:07-cv-00497-RWS (E.D. Tex.
Dec. 17, 2010) (Dkt. 901). When it affirmed the denial of
judgment as a matter of law, this court discussed only
references not at issue here. SynQor I, 709 F.3d at 1374.
VICOR CORPORATION v. SYNQOR, INC. 5
23, 1991, both of which are incorporated by refer-
ence herein.
Steigerwald ’090 col.1 ll.6-12. The two patents issued from
separate applications.
1
Steigerwald ’539 teaches a converter that has a single
regulation stage followed by a single isolation stage. In its
primary embodiment, the isolation stage uses diodes as
rectifiers. In an alternative embodiment, Steigerwald ’539
teaches substituting controlled rectifiers for the diodes:
In other alternative embodiments, such as those
of FIGS. 7-9, synchronous rectifiers SRa and SRb
are used instead of diodes CRa and CRb of FIGS.
4 and 6.
Steigerwald ’539 col.4 ll.58-60.
Figure 4, for example, shows where this substitution
takes place. In Figure 4, the output of a pre-regulator
circuit 30 feeds into the isolation stage, which is a capaci-
tance-multiplying converter 20. Diodes CRa and CRb are
within the capacitance-multiplying converter:
6 VICOR CORPORATION v. SYNQOR, INC.
2
Steigerwald ’090 teaches a converter that has a single
isolation stage followed by a plurality of regulation stages.
These regulation stages allow Steigerwald ’090 to provide
multiple output voltages. The isolation stage uses diodes
as rectifiers, and Steigerwald ’090 does not disclose using
controlled rectifiers in place of the diodes.
Its only figure, Figure 1, is as follows:
Although no item 20 is labeled on this figure, Stei-
gerwald ’090’s specification explains that Figure 1 shows
a power module that “includes a capacitance-multiplying
converter 20.” The specification further says that the
items with labels prefixed CR are diode rectifiers, and
that they are within the capacitance-multiplying convert-
er. Steigerwald ’090 col.2 ll.14-40.
Steigerwald ’090 explains the capacitance-multiplying
converter in Figure 1 using language that is identical,
apart from a rearranged sentence, to Steigerwald ’539’s
description of that converter in its Figure 4. Compare
VICOR CORPORATION v. SYNQOR, INC. 7
Steigerwald ’090 col.2 ll.14-33 with Steigerwald ’539 col.3
ll.14-32.
C
The examiner’s rejections relied on two additional pri-
or art references: Abraham I. Pressman, Switching and
Linear Power Supply Converter Design, Hayden Book Co.,
NJ (1977) (“Pressman”) and J.A. Cobos & J. Uceda, Low
Output Voltage DC/DC Conversion, IEEE (1994) (“Co-
bos”). Their teachings are not relevant to our disposition
of this appeal.
II
A
The examiner instituted inter partes reexamination
and ultimately rejected all claims, including both issued
claims 1-33 and new claims 34-38. Right of Appeal Notice,
Reexamination No. 95/001,702 (Nov. 26, 2011).
The examiner found that Steigerwald ’090 incorpo-
rates the text and drawings of Steigerwald ’539 by refer-
ence. He reasoned that Steigerwald ’090 expressly
incorporates Steigerwald ’539, the two are directed to the
same type of converter, and their figures and text teach
“nearly identical” isolation stages. Id. at 8-9.
The examiner then concluded that the combined ref-
erence teaches applying Steigerwald ’539’s alternative
embodiment, which replaces diodes in the isolation stage
with controlled rectifiers, to Steigerwald ’090, which
teaches an isolation stage that uses diodes, followed by
multiple regulation stages. Id. at 3 (adopting proposed
rejection from Corrected Request for Inter Partes Reex-
amination, Reexamination No. 95/001,702, at 8-14 (Sept.
8, 2011)). He accordingly rejected claims 20-23, 27, 29, 30,
32, and 33 as anticipated under 35 U.S.C. § 102(b) by the
combined reference. Id.
8 VICOR CORPORATION v. SYNQOR, INC.
All other claims, apart from new claim 34, were re-
jected as obvious over the combined Steigerwald reference
in view of various permutations of Cobos, Pressman, and
the knowledge of a person of ordinary skill in the art. Id.
at 4-7.
The examiner also rejected all claims as obvious over
Cobos in view of Pressman. Id. at 5-6.
B
SynQor appealed, and the Board reversed all rejec-
tions. Vicor Corp. v. SynQor, Inc., No. 2014-001733
(P.T.A.B. Apr. 10, 2014).
The Board first reversed the anticipation rejection. It
found that Steigerwald ’090 “does not identify any partic-
ular sections or specific subject matter [within Stei-
gerwald ’539] to be associated with particular
embodiments,” and concluded that it incorporates no more
than Steigerwald ’539’s text. Id., slip op. at 7. The Board
then found that the combined reference did not teach a
single embodiment that has an isolation stage that uses
controlled rectifiers, followed by multiple regulation
stages. In reaching this conclusion, the Board did not
consider whether the combined reference taught applying
Steigerwald ’539’s alternative embodiment to Steigerwald
’090. Instead, it reasoned that Steigerwald ’090 does not
teach “swapping around” Steigerwald ’539’s stages to
create an isolation stage followed by multiple regulation
stages. Id., slip op. at 7-8.
The Board then reversed each of the obviousness re-
jections that were based on the Steigerwald patents
because it found that a person of skill in the art would not
have been motivated to combine the Steigerwald patents’
teachings. Id., slip op. at 9-13, 17-18.
Finally, the Board reversed the obviousness rejections
over Cobos and Pressman. Relevant here, it concluded
that SynQor had shown commercial success “sufficient to
VICOR CORPORATION v. SYNQOR, INC. 9
overcome the Examiner’s conclusion” that the claims were
nonobvious over those references. Id., slip op. at 21.
DISCUSSION
I
An invention is not patentable if “the invention was
patented or described in a printed publication . . . more
than one year prior to the date of the application.” 35
U.S.C. § 102(b) (2006). 2
A patent claim is invalid as anticipated if “the four
corners of a single, prior art document describe every
element of the claimed invention, either expressly or
inherently, such that a person of ordinary skill in the art
could practice the invention without undue experimenta-
tion.” Advanced Display Sys., Inc. v. Kent State Univ., 212
F.3d 1272, 1282 (Fed. Cir. 2000). Other material may be
considered as part of the single document if the host
document incorporates it by reference. Id.
A host document incorporates material by reference if
it “identif[ies] with detailed particularity what specific
material it incorporates and clearly indicate[s] where that
material is found in the various documents.” Id. Whether
the host document describes the material with sufficient
particularity is determined from the point of view of a
person of reasonable skill in the art. Id. at 1283.
This court reviews the Board’s legal conclusions de
novo and its factual determinations for substantial evi-
dence. Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir.
2013). Anticipation is a question of fact, while incorpora-
tion by reference, and therefore “what material . . . consti-
2 Because the application that led to the ’190 patent
was filed before the America Invents Act was adopted, the
prior version of §§ 102 and 103 applies.
10 VICOR CORPORATION v. SYNQOR, INC.
tutes the single reference” for anticipation purposes, is a
question of law. Advanced Display Sys., 212 F.3d at 1283.
On appeal, SynQor asserts 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 incorpora-
tion. If Steigerwald ’090 incorporates Steigerwald ’539’s
text, SynQor contends that the combined reference does
not anticipate because it does not teach applying Stei-
gerwald ’539’s substitution of controlled rectifiers for
diodes to Steigerwald ’090’s embodiment.
We reject both arguments. As the examiner observed,
the two patents teach an isolation stage that is “nearly
identical.” Right of Appeal Notice, Reexamination No.
95/001,702, at 9 (Nov. 26, 2011). The top left portion of
Steigerwald ’090’s Figure 1 shows the same circuit as the
portion of Steigerwald ’539’s Figure 4 labeled the capaci-
tance-multiplying converter 20. The patents’ specifica-
tions describe this stage identically apart from variations
in item numbers and one rearranged sentence. Compare
Steigerwald ’539 col.3 ll.14-32 with Steigerwald ’090 col.2
ll.14-33. Most compellingly, Steigerwald ’090’s specifica-
tion refers to the “capacitance-multiplying converter 20”
even though no item 20 is labeled in its own figures.
Instead, the converter is labeled in Figure 4 of Stei-
gerwald ’539. 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.
The incorporated teachings include Steigerwald ’539’s
alternative embodiment, which teaches a substitution
that takes place within the isolation stage:
VICOR CORPORATION v. SYNQOR, INC. 11
In other alternative embodiments, such as those
of FIGS. 7-9, synchronous rectifiers SRa and SRb
are used instead of diodes CRa and CRb of FIGS.
4 and 6.
Steigerwald ’539 col.4 ll.58-60; see also id. at fig.4 (show-
ing that diodes CRa and CRb are within the capacitance-
multiplying converter 20).
SynQor argues that this substitution, even if taught
by the combined reference, does not apply to the converter
of Steigerwald ’090 because that embodiment is “separate
and distinct.” For support, it points to the Board’s conclu-
sion that the substitution “is contrary to the express
purpose of both patents.” SynQor also highlights differ-
ences between the circuits’ induction stages, including
Steigerwald ’090’s use of series regulators and addition of
various connections.
These arguments are unavailing. First, “teaching
away is not relevant to an anticipation analysis.” Krippelz
v. Ford Motor Co., 667 F.3d 1261, 1269 (Fed. Cir. 2012).
Second, the differences SynQor identifies in the inven-
tions’ isolation stages occur at their periphery and would
not stop a person of skill in the art from recognizing the
overall identity between them. The differences also ap-
pear driven by the circuits’ reversed ordering of the isola-
tion and regulation stages; for example, SynQor tells us
that Steigerwald ’090’s isolation stage includes series
regulators because it is not preceded by a regulation
stage. Brief of Appellee at 29.
We accordingly hold that the combined reference
teaches substituting controlled rectifiers for diodes within
the capacitance-multiplying converter 20 of both Stei-
gerwald ’539’s Figure 4 and Steigerwald ’090’s Figure 1.
The combined reference teaches a single embodiment that
anticipates all elements of representative claim 20, and
we reverse the Board’s conclusion to the contrary.
12 VICOR CORPORATION v. SYNQOR, INC.
II
An invention is not patentable if “the differences be-
tween the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a) (2006).
This test requires consideration of four factors, among
them “objective evidence of nonobviousness” such as
commercial success. Mintz v. Dietz & Watson, Inc., 679
F.3d 1372, 1375, 1378-79 (Fed. Cir. 2012).
We vacate and remand each of the Board’s obvious-
ness rejections for further consideration in light of our
conclusion that the combined Steigerwald reference
anticipates claims 20-23, 27, 29, 30, 32, and 33.
The Board’s reversal of the obviousness rejections
that involved the Steigerwald patents was premised on its
conclusion that the combined reference did not anticipate
those claims.
While the obviousness rejection over Cobos and
Pressman does not directly involve the Steigerwald pa-
tents, the teachings of the combined Steigerwald refer-
ence may be relevant to any objective evidence of
nonobviousness. For example, commercial success is
evidence of obviousness only when there is a “nexus . . .
between the merits of the claimed invention and evidence
of commercial success.” Iron Grip Barbell Co. v. USA
Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004). Vicor
should have the opportunity to argue that SynQor’s
evidence of commercial success is attributable not to the
claimed invention, but to the prior art converter taught by
the combined Steigerwald references.
REVERSED IN PART, VACATED IN PART, AND
REMANDED
VICOR CORPORATION v. SYNQOR, INC. 13
COSTS
No costs.