In re Translogic Technology, Inc

Brief Fact Summary. Translogic Technology, Inc. (Plaintiff) applied for and received a patent related to multiplexers, the ‘666 patent.  The United States Patent and Trademark Office’s Board of Patent Appeals and Interferences (the Board) reexamined patent ‘666 and rejected particular claims of patent ‘666 as obvious due to prior art references.  The particular prior references were a technical article and a textbook.  The Board found a person of ordinary skill in the art would have used the textbook information for the multiplexer stages in the article.

Synopsis of Rule of Law. Under § 103(a), if the differences in the patented subject matter and the subject matter of the prior art would have been obvious to a person of ordinary skill in the art when it was invented, then the subject matter is not eligible for patent

Facts. Plaintiff applied for and received a patent related to multiplexers, the ‘666 patent.  A transmission gate multiplexer (TGM) is specifically referenced in the ‘666 patent claim.  One prior art reference, Gorai, is a technical article which discloses multiplexers but does not make known the use of a TGM.  The other prior art reference, Weste, is a textbook which reveals and teaches a TGM.  Plaintiff filed a patent infringement suit against Hitachi, Ltd. claiming infringement of its ‘666 patent.  Hitachi filed multiple requests to the Board for reexamination of patent ‘666 which the Board combined into one reexamination.  Due to the prior art references, the Board rejected several claims of the ‘666 patent based on obviousness.  The Board determined that the claims in patent ‘666 were obvious because a person of ordinary skill in the art would have applied the teaching in Weste to the technology disclosed in Gorai.  Plaintiff appealed the rejection, which was affirmed.  When the Board denied rehearing, Plaintiff appealed to this court.  In the infringement case, Hitachi was found liable by the district court for inducing infringement.  Hitachi filed an interlocutory appeal and the district court stayed its entry of permanent injunction.  The district court then entered its final judgment and Hitachi appealed to this court.  This court combined the infringement appeal with the reexamination appeal.

Issue.  Is the subject matter eligible for patent under § 103(a) if the differences in the patented subject matter and the subject matter of the prior art would have been obvious to a person of ordinary skill in the art at the time of invention?

Held. Held:  (Rader, J.)  No.  The subject matter is not eligible for patent under § 103(a) if the differences in the patented subject matter and the subject matter of the prior art would have been obvious to a person of ordinary skill in the art at the time of invention.  This basic principle was affirmed by the Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).  In KSR, the Supreme Court also corrected this Court’s “rigid” application of the “teaching, suggestion, and motivation” (TSM) test.  When using the TSM test, the Court should use a broader approach.  In this case, Gorai’s article predates the ‘666 patent and discloses multiplexer circuits.  A person with ordinary skill in the art would have known the TGM subject matter of the Weste textbook full well and would have applied that knowledge to the information disclosed in the Gorai article.  Plaintiff makes the same mistake that was corrected in KSR by arguing that Gorai actually teaches away from multiplexers because it designs logic circuits.  The variation does not need to address the same problem as the patent application if the variation is in the public domain and therefore common knowledge to a person of ordinary skill in the art.  Plaintiff also argues Weste does not provide TSM on using TGMs in a series circuit as shown in Gorai.  However, in KSR, the Supreme Court noted that a person’s creativity and inferences can be considered by the court when determining if a person of ordinary skill in the art would have found the subject matter of the patent obvious.  In this case, the ‘666 patent is invalid under 35 U.S.C. § 103(a) for obviousness, as a person of ordinary skill in the art could have selected a TGM taught in Weste and applied it to the circuits revealed in Gorai.

Discussion. There is tension between a parallel patent application review and infringement case, as highlighted in this case.  Here, the Board and the district court came to different conclusions.  The same patent claims rejected by the Board were found by the district court to have been infringed upon by Hitachi.  In the later analysis of the infringement claim, the Federal Circuit dismissed the infringement suit, overturned the district court’s imposed damages, and lifted the injunction.  The Federal Court evaluated the patent claims and upheld its use of the TSM test but applied it in a flexible manner after KSR.