Brief Fact Summary. Translogic Technology, Inc. (Plaintiff) applied for and received a patent related to multiplexers, the ‘666 patent.Â 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.Â The particular prior references were a technical article and a textbook.Â 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 Â§ 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
A patent claim is invalid as obvious if the differences between 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.View Full Point of Law
Issue. Â Is the subject matter eligible for patent under Â§ 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:Â (Rader, J.)Â No.Â The subject matter is not eligible for patent under Â§ 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.Â This basic principle was affirmed by the Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).Â In KSR, the Supreme Court also corrected this Court’s “rigid” application of the “teaching, suggestion, and motivation” (TSM) test.Â When using the TSM test, the Court should use a broader approach.Â In this case, Gorai’s article predates the ‘666 patent and discloses multiplexer circuits.Â 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.Â Plaintiff makes the same mistake that was corrected in KSR by arguing that Gorai actually teaches away from multiplexers because it designs logic circuits.Â 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.Â Plaintiff also argues Weste does not provide TSM on using TGMs in a series circuit as shown in Gorai.Â 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.Â In this case, the ‘666 patent is invalid under 35 U.S.C. Â§ 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.Â Here, the Board and the district court came to different conclusions.Â The same patent claims rejected by the Board were found by the district court to have been infringed upon by Hitachi.Â 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.Â The Federal Court evaluated the patent claims and upheld its use of the TSM test but applied it in a flexible manner after KSR.