Common Law Collateral Estoppel Applies to Board’s decisions

In SYNQOR, INC., v. VICOR CORPORATION, No. 19-1704 (Feb. 22, 2021), the Court held that common law collateral estoppel, also know as issue preclusion, applies to Board’s decisions in inter partes reexaminations.

The ‘190 patent issued July 4, 2006, with a family of patents that date back to a provisional application of January 1997. This patent family is extensive with two other patents (7,564,702 and 8,023,290) that have been involved in court litigation. These patents disclose technology for DC-DC power converters used in large computer systems and telecommunication and data communication equipment to convert direct electric current from one voltage to another.

In 2011, SynQor asserted the ’190 patent, the ’702 patent, and the ’290 patent, among others, against Vicor. Vicor petitioned for reexamination of the ’190, ’702, and ’290 patents, arguing that the claims of the ’190 patent were unpatentable over two references: “Steigerwald,” U.S. Patent No. 5,377,090, including the text and drawings of U.S. Patent No. 5,274,539, and “Cobos,” Cobos et al., “Low Output Voltage DC/DC Conversion,” 20th Int’l Conf. Indus. Electronics, Control and Instrumentation (Sept. 5–9, 1994) pp. 1676–81. In response, SynQor argued that an artisan would not have combined Steigerwald and Cobos because they taught circuits that operated at incompatible frequencies. The Board affirmed that the challenged claims of the ’702 patent were not unpatentable, finding that “there are incompatibilities in frequency between [Cobos and Steigerwald].” The Board likewise found the challenged claims of the ’290 patent not unpatentable based on a combination of Steigerwald, Cobos, and another reference. But as to the patent at issue here, the ’190 patent, the Board found instead that Steigerwald and Cobos were not incompatible. In concluding that the challenged claims of the ’190 patent were unpatentable over Steigerwald and Cobos, the Board was “not persuaded that the switching frequency differential is sufficient to render the combination unsuitable.” Vicor Corp. v. SynQor, Inc., No. APPEAL 2014-001733, 2016 WL 2344371, at *6 (P.T.A.B. May 2, 2016). SynQor timely appealed the Board’s final decision in the ’190 patent reexamination.

The court agreed with SynQor’s first argument that issue reclusion compelled a finding that an artisan would not combine Steigerwald and Cobos—which resolves the parties’ dispute for claims 1–19, 28, and 31. “[T]he determination of a question directly involved in one action is conclusive as to that question in a second suit.” B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 147 (2015) (quoting Cromwell v. County of Sac, 94 U.S. 351, 354 (1877)). “It is well established that collateral estoppel, also known as issue preclusion, applies in the ad-ministrative context.” MaxLinear, Inc., 880 F.3d at 1376. In fact, “because the principle of issue preclusion was so ‘well established’ at common law, in those situations in which Congress has authorized agencies to resolve disputes, ‘courts may take it as given that Congress has legislated with the expectation that the principle [of issue preclusion] will apply ‘except when a statutory purpose to the contrary is evident.’” B & B Hardware, 575 U.S. at 148 (quoting Astoria Fed. Sav. & Loan Ass’n v. Solimino, 501 U.S. 104, 108 (1991)).

Thus, administrative decisions have preclusive effect “[w]hen an administrative agency is acting in a judicial capacity and resolves disputed issues of fact properly before it which the parties have had an adequate opportunity to litigate.” B & B Hardware, 575 U.S. at 148–49 (quoting Univ. of Tenn. v. Elliott, 478 U.S. 788, 797–98 (1986)). “Although administrative estoppel is favored as a matter of general policy, its suitability may vary according to the specific context of the rights at stake, the power of the agency, and the relative adequacy of agency procedures.” Astoria, 501 U.S. at 109–10.

The Court wrote that common law collateral estoppel applies to inter partes reexaminations and evaluated whether the facts supported issue preclusion. The Court said that they do.