Patent holder Translogic initiated an infringement litigation against alleged infringer Hitachi Ltd. in 1999. In 2003, a jury upheld the validity of Translogic's patent. In May 2005, following of a finding of induced infringement, Translogic received an $86.5 million jury award for patent infringement damages and the court entered a permanent injunction. After the original filing of the district court litigation, Hitachi initiated the first of five third party requests for re-examination of the relevant patent before the USPTO. These requests were merged into a single proceeding before the USPTO during the pendency of the district court action. In 2004, the USPTO rejected a critical portion of the Translogic patent on the grounds that the claims would have been obvious at the time of invention. In July 2005, following Translogic's attempt at claim amendment, the PTO affirmed its rejection of the Translogic patent. Various appeals ensued and which the Federal Circuit consolidated and stayed the injunction. In the current phase of the action, the Federal Circuit relied held that the patent at issue would have been obvious at the time of the invention. 
| This case illustrated the ongoing tension between district court proceedings and parallel USPTO reexaminations, where each proceeding ended with a different result. This case involves a patent covering a multiplexer---a type of complex electrical circuit. Patent holder Translogic initiated infringement litigation against alleged infringer Hitachi Limited in 1999. In 2003, a jury upheld the validity of Translogic’s patent. In May 2005, following a finding of induced infringement, Translogic received an $86.5 million jury award for patent infringement damages. After the jury’s verdict the district court entered a permanent injunction. Shortly after the original filing of the distrct court litigation, Hitachi initiated the first of five third party requests for reexamination of U.S. Patent No. 5,162,666 (“the ‘666 patent”). The ‘666 patent, entitled “Transmission Gate Series Multiplexer” relates to a type of electrical circuit which has many inputs, one or more control lines, and one output. The PTO merged the various requests into a single proceeding which took place during the pendency of the district court action. In 2004, the PTO rejected a critical portion of the Translogic patent on the grounds that the claims would have been obvious at the time of invention. In July of 2005, following Translogic’s attempt at claim amendment, the PTO affirmed its rejection of the Translogic patent. Various appeals ensued. The Federal Circuit consolidated them, and stayed the injunction, cleaving to the dictates of the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., regarding obviousness. The Federal Circuit narrowed its focus to the inquiry about whether differences between the patented subject matter and the prior art would have been obvious at the time of invention to a person of ordinary skill in the art by using KSR’s dictation of “common sense” and “flexibility” for determining obviousness. On appeal, Translogic attempted to demonstrate that the prior art reference offered by Hitachi taught away from its invention because it involved a logic solution, e.g., an algorithm to design logic circuits based on functional parameters, rather than multiplexers. The court disagreed, saying that one with “ordinary skill” in the art (e.g., circuitry) would look to logic for likely solutions and that the prior art disclosed a series of multiplexer circuits as claimed in the '666 patent. Translogic’s other attempts to distinguish the prior art met a similar fate. In sum, the decision of the PTO Board that found that the patent claims at issue, related to a multiplexer, were not valid due to obviousness, pursuant to 35 U.S.C. § 103, was affirmed because the Board properly analyzed prior art, and words of the claim and specifications, and concluded that a person of ordinary skill would have been aware of the claims. |