In Re Translogic Technology, Inc.

504 F.3d 1249 (2007)

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Nature of the Case

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Facts

PTO issued the '666 patent, entitled 'Transmission Gate Series Multiplexer.' The '666 patent is the subject of a patent infringement litigation between P and Hitachi, Ltd. et al. (D). D filed five third-party requests for reexamination of the '666 patent. The merged reexamination resulted in the rejection of claims 16, 17, 39-45, 47 and 48 under 35 U.S.C. § 103(a) because they would have been obvious at the time of invention. The PTO found the claims obvious in light of the references Gorai or Tosser in view of Weste. During the reexamination proceedings, P canceled original claims 1-15 and 18-27, and newly added claims 28-38 and 46. P then appealed to the Board. On July 14, 2005, the Board affirmed the rejection. The Board denied P's request for reconsideration. P appealed. The district court infringement case proceeded in parallel. On October 2003, a jury upheld the patent as valid. In February 2005, the district court granted summary judgment of infringement with respect to some, but not all, of D's accused products. In May 2005, a jury found D had induced infringement and held D liable for $86.5 million in damages. The district court entered a permanent injunction, which was stayed. D appealed to this court. This court consolidated the interlocutory appeal with the appeal from the final judgment and added P's reexamination appeal from the Board to the same panel. The '666 patent deals with multiplexers. A multiplexer has multiple inputs, one or more control lines, and one output. The signals on the control lines select one of the various inputs to be passed to the output. In a 2:1 multiplexer, a single output value is selected from two inputs. Similarly, in 4:1 and 8:1 multiplexers, a single output is selected from among four or eight inputs, respectively. Thus, the invention selects one of the multiple inputs to pass to the output. The '666 patent describes a multiplexer that couples together multiple stages of 2:1 multiplexers in series. The '666 patent specifically uses a transmission gate multiplexer (TGM) as each 2:1 multiplexer. The claims on appeal specify multiplexers with multiple 2:1 TGMs connected in series. During the reexamination, Translogic agreed that all of the claims on appeal stood or fell with claims 47 and 48. The Board affirmed the rejection of claims 47 and 48 as obvious under §103(a). The Board relied on Gorai combined with Weste, as well as Tosser combined with Weste. The Gorai and Tosser references are technical articles; the Weste reference is a textbook. The Board found that a person of ordinary skill in the art would have been motivated to use a TGM circuit as taught in Weste for the multiplexer stages in Gorai. The Board also found that Tosser teaches a 4:1 multiplexer built from three 2:1 multiplexer stages connected in series. Tosser does not disclose the use of TGMs for the multiplexer stages. The Board found that a person of ordinary skill in the art would have been motivated to use a TGM circuit as taught in Weste for the multiplexer stages in Tosser.