{"id":1726,"date":"2017-08-30T21:24:19","date_gmt":"2017-08-31T01:24:19","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1726"},"modified":"2017-09-02T22:44:37","modified_gmt":"2017-09-03T02:44:37","slug":"not-every-instance-of-an-agency-reaching-inconsistent-outcomes-in-similar-related-cases-will-necessarily-be-erroneous","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1726","title":{"rendered":"Not Every Instance of an Agency Reaching Inconsistent Outcomes in Similar, Related Cases will Necessarily be Erroneous"},"content":{"rendered":"

In\u00a0Vicor Corp. v. Synqor, Inc.<\/a>, [2016-2283] (August 30, 2017) the Federal Circuit\u00a0affirmed in part, vacated in part, and remanded the\u00a0Board\u2019s decisions in two reexaminations, one in which the\u00a0Board found that certain claims of U.S. Patent No. 8,023,290 are patentable; and one in which the Board found certain claims of U.S. Patent No. 7,272,021 unpatentable as anticipated or obvious.<\/p>\n

The Federal Circuit found that despite sharing a common panel and\u00a0having opinions issued on the same date, the decisions in\u00a0the respective reexaminations contain inconsistent findings\u00a0on identical issues and on essentially the same\u00a0record. With respect to the ‘290 patent\u00a0reexamination, the Federal Circuit said that\u00a0the
\nBoard improperly analyzed the obviousness arguments\u00a0under only one of the four Graham factors when it\u00a0looked exclusively at the objective evidence, without considering the remaining factors and the relative\u00a0strength of the factors. The Federal Circuit further said that the Board reached inconsistent\u00a0conclusions as to the evidentiary weight to be\u00a0given to the secondary considerations evidence presented\u00a0in the respective reexaminations of the \u2019290 and \u2019021\u00a0patents, without any explanation to justify such inconsistency.<\/p>\n

The Federal Circuit said that the Board\u2019s legal error with respect to the ‘290 patent is underscored by its opinion\u00a0issued on the same day in the related reexamination of\u00a0the \u2019021 patent, where the Board applied all\u00a0four Graham factors in the \u2019021\u2019s reexamination and\u00a0stated that \u201c[t]he Federal Circuit has determined that\u00a0only after considering the four Graham criteria together\u00a0can the decision maker make the legal determination of\u00a0whether the invention is nonobvious.\u201d<\/p>\n

The Federal Circuit said that in\u00a0the \u2019290\u2019s reexamination, the Board found the objective
\nevidence to be so persuasive that it approved of the examiner\u2019s\u00a0decision to withdraw rejections without analyzing\u00a0the remaining Graham factors and without considering
\nFederal Circuit decisions on related claims. \u00a0In the \u2019021\u2019s\u00a0reexamination, however, the Board determined that the\u00a0objective evidence principally related to features of the
\nclaims that were found to be anticipated in other cases and,\u00a0therefore, found that there was no nexus between the\u00a0objective evidence and the claims of the \u2019021 patent. The Federal Circuit concluded that\u00a0Board\u2019s decisions do not evince any explanation or justification\u00a0for these inconsistent findings, given the similarity\u00a0between the claims at issue in the respective reexaminations.<\/p>\n

The Federal Circuit said that not every instance of an agency reaching\u00a0inconsistent outcomes in similar, related cases will necessarily\u00a0be erroneous, but concluded that the inconsistent application of the Graham factors in two cases reaching different results, required that the cases be vacated and remanded,<\/p>\n","protected":false},"excerpt":{"rendered":"

In\u00a0Vicor Corp. v. Synqor, Inc., [2016-2283] (August 30, 2017) the Federal Circuit\u00a0affirmed in part, vacated in part, and remanded the\u00a0Board\u2019s decisions in two reexaminations, one in which the\u00a0Board found that certain claims of U.S. Patent No. 8,023,290 are patentable; and … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[12,36],"tags":[],"class_list":["post-1726","post","type-post","status-publish","format-standard","hentry","category-obviousness","category-secondary-considerations"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1726","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1726"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1726\/revisions"}],"predecessor-version":[{"id":1729,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1726\/revisions\/1729"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1726"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1726"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1726"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}