United States: Motivation To Combine And Teaching Away: Viable Tools, But With Limits

Though inter partes reexamination has faded from view in the post-AIA1 legal landscape, the proceedings continue to generate important precedent. In Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, No. 2015-1533 (Fed. Cir. June 15, 2016), the Federal Circuit affirmed a finding of obviousness in an inter partes reexamination. The Federal Circuit's analysis regarding the principles of "motivation to combine" and "teaching away" supplies valuable guidance for all types of patent validity challenges. Practitioners seeking to mount or thwart a validity argument based on these principles should appreciate that, while they remain viable tools to demonstrate patentability, they receive careful scrutiny.

The challenged patent, which was assigned to Allied Erecting and Dismantling Co., Inc., is directed to heavy machinery tools for construction and demolition that can be attached to a universal structure, which in turn can be attached to various tools such as a shear, concrete crusher, or grapple.  The patent purports to address a need in the art for easily changing machine tools using common machine structures. Addressing this purported need, the patent describes "a multiple tool attachment system which is easily converted between a plurality of distinct tools." Slip op. at 2 (citation omitted).

On May 5, 2010, Genesis Attachments, LLC, filed a petition for inter partes reexamination, challenging the validity of the patent. Following claim amendments by Allied, the examiner allowed the claims over a prior art reference called "Ogawa." On appeal, the Patent Trial and Appeal Board (PTAB) reversed, finding that the challenged claims would have been obvious over a separate reference—"Caterpillar"—in view of Ogawa. Recognizing that its reversal constituted a new ground of rejection, the PTAB allowed Allied to reopen prosecution or request rehearing, and instructed the examiner to consider a third reference, "Clark." On remand, after Allied again amended the claims, the examiner found that the challenged claims would have been obvious over Caterpillar in view of Ogawa and Clark. The PTAB affirmed the examiner's rejections, and Allied appealed to the Federal Circuit.

Allied raised two primary arguments at the Federal Circuit. First, Allied challenged the motivation to combine Caterpillar with Ogawa as part of an obviousness analysis. According to Allied, the PTAB's analysis required combining Caterpillar such that the "jaw" described in the reference would become "movable," yet that change would alter the "principle of operation" of Caterpillar and render the described device "inoperable." Id. at 13 (citation omitted). Second, Allied argued that Caterpillar taught away from combining its teachings with Ogawa. In particular, Allied asserted that Caterpillar criticized an approach—such as that taught by Ogawa—where a main pivot pin for two "jaws" also mounted the jaws to the frame of the machine. Id. at 16.

Neither argument was sufficient to persuade the Federal Circuit that the PTAB erred in its obviousness analysis. Regarding the "motivation to combine" principle, the Federal Circuit noted that the embodiments disclosed in prior art references need not be "physically combinable" to support an obviousness rejection. Id. at 13 (quoting In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)). Instead, references can be combined in an obviousness analysis if a person having ordinary skill in the art would be motivated to combine the "teachings" of the references to arrive at the claimed solution. Id. at 14 (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). The Federal Circuit recognized that the combination of references required making the "immobilized jaw" of Caterpillar movable, yet concluded that such a modification would have been obvious, since it would have yielded "a wider range of motion as taught by Ogawa, to make the jaw set more efficient." Id. Indeed, the court explained, even if such a change would have "simultaneous advantages and disadvantages," that would not make the modification nonobvious. Id. (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).

Regarding Allied's "teaching away" argument, the Federal Circuit further found that Caterpillar did not expressly teach away from Ogawa. As the court noted, "Caterpillar expresses doubt as to whether an optimal design feature may have the main pivot pin for both jaws also mount the jaws to the frame in order to effect the quick change functionality." Id. at 16. The court further explained that there was no teaching away between Caterpillar and Ogawa because the combination of references did not use the pivot pin attachment mechanism of Ogawa; instead, the combination used the feature of movable jaws taught in Ogawa, for which there was no teaching away in Caterpillar. Moreover, the court rejected Allied's argument that the PTAB's analysis regarding teaching away overlooked the need for "two separate cylinders," since the court found such details to be "extraneous" to the PTAB's rejections.  Id.

Two caveats to the Federal Circuit's analysis in Allied Erecting are worth noting. First, as the Federal Circuit stated in the case, although the ultimate determination of obviousness receives de novo review on appeal, "underlying factual findings, including what a reference teaches and the differences between the prior art and the claimed invention," are reviewed for "substantial evidence." Id. at 11. Second, a finding of "motivation to combine" is also reviewed on appeal for "substantial evidence." Id. (quoting In re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006)) Thus, the Federal Circuit's affirmance of the obviousness rejections in Allied Erecting is not to say that the Federal Circuit necessarily would have reversed if the PTAB had found the claims patentable.

With these caveats in mind, Allied Erecting is instructive for practitioners seeking to build or destroy an obviousness position. The Federal Circuit's admonition that references may be combined even if their disclosed apparatuses are not "physically combinable" is important. Instead, the focus is on whether the "teachings" of the references are combinable. Similarly, the Federal Circuit's instruction that references do not "teach away" merely because a technique of one is described as less than "optimal" in the other is significant. Teaching away requires more—specifically, a finding that a reference would discourage a particular technique, or lead a person of ordinary skill in a "divergent" direction. Id. at 15 (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). While Allied Erecting highlights the flaws in imperfect "motivation to combine" and "teaching away" arguments, practitioners should not be discouraged from advancing such arguments. Both principles for attacking an obviousness analysis remain available. In light of Allied Erecting, a "motivation to combine" challenge should remain potent, for example, where the teachings of one reference are disconnected from the teachings of another reference. And if one reference specifically counsels against a combination of the two sets of teachings—not merely "extraneous" teachings in the references—that should further erode the foundation of an obviousness position based on the references.

Footnotes

1 The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29, § 6(a), 125 Stat. 284, 299-304 (2011), replaced inter partes reexamination with other inter partes validity challenges, including inter partes review and post-grant review.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
23 Sep 2018, Seminar, Chicago, United States

Finnegan is a sponsor of the Intellectual Property Owners Association Annual Meeting, supporting the Women in IP Networking Brunch.

26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions