In Re Translogic Technology, Inc.
504 F.3d 1249 (Fed. Cir. 2007)
Translogic applied for and
received a patent for a kind of computer circuit called 'multiplexer'.
Translogic sued Hitachi for infringement and won $86M. Hitachi appealed to the USPTO to
reexamine Translogic's patent.
Hitachi argued that the
patent was invalid because it failed the requirement for nonoviousness in 35 U.S.C. §103.
The USPTO reexamined and
rejected Translogic's patent. Translogic appealed.
The USPTO Board of Patent
Appeals affirmed. Translogic appealed.
The Board looked to two
references found by Hitachi (Weste and Gorai) and found that while
neither explained all of Translogic's multiplexer, the two in combination
could lead someone to figure it out.
"A person of ordinary
skill in the art would have been motivated to use a TGM circuit taught
in Weste for the multiplexer stages in Gorai."
Translogic argued that it
wouldn't have been obvious to
combine Weste with Gorai because there was no motivation to do so since
Gorai was trying to solve a different problem than Translogic was trying
The Appellate Court affirmed.
The Appellate Court applied
the TSM Test and found that the
Translogic patent would have been obvious to one of skill in the art at the time of
The TSM Test (Teaching, Suggestion & Motivation) says
that a patent is obvious
if some motivation or suggestion to combine the prior art teachings can
be found in the prior art.
Basically, under the TSM
Test, in order to be obvious, there would have to be a prior art reference for the TGM Circuit, and one for
the multiplexer stages, and
a reference suggesting that the two should be combined.
The Court looked to KSR
International Co. v. Teleflex Inc. (550
U.S. 398 (2007)), and found that the TSM Test was just a
starting point and did not need to be rigidly applied.
Therefore, once the Court
decided that it would be pretty easy for a skilled artisan to make the
logical jump and decide that the two prior art references could be combined, then there was
no need for a direct reference suggesting the two should be combined.