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 to solve.
  • 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 invention.
      • 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.