Inter Partes Reexam Can Trigger Issue Preclusion
Before Dyk, Clevenger, and Hughes. Appeal from the Patent Trial and Appeal Board.
Summary: A finding during inter partes reexamination that two references would not be combined precluded a finding of obviousness based on the same two references in a later proceeding.
Vicor filed three reexamination (“reexam”) petitions against three patents owned by SynQor. In the first two reexams, the Patent Trial and Appeal Board decided that a skilled artisan would not combine two prior art references—“Steigerwald” and “Cobos”—so SynQor’s patent claims would not have been obvious. The Federal Circuit affirmed those decisions.
In the third reexam, the Board departed from its two prior decisions and combined Steigerwald with Cobos to find the challenged claims obvious. SynQor appealed to the Federal Circuit, arguing that issue preclusion barred this obviousness finding based on the previously-litigated combination.
The Federal Circuit first considered whether inter partes reexam proceedings can trigger issue preclusion. Although these proceedings allow for neither compulsory process nor cross-examination, the Federal Circuit majority found that they provide adequate adversarial participation for both the requester and the patent owner. Thus, the majority held that issue preclusion may arise from such proceedings. Applying the traditional issue-preclusion factors here, the majority found that the decisions in the first two reexams precluded the combination of Steigerwald and Cobos in the third reexam. Accordingly, the Federal Circuit vacated the Board’s decision in the third reexam.
In dissent, Judge Dyk argued that inter partes reexam is inquisitional rather than adversarial, so it cannot trigger issue preclusion. The dissent cited the patent examiner’s leading role in the proceedings, along with the lack of discovery and cross-examination, to distinguish inter partes reexam from traditional adversarial proceedings.
Editor: Paul Stewart