Wednesday, June 15, 2016

CAFC affirms PTAB decision in Allied Erecting

The CAFC affirmed the Board’s (“PTAB”) decision, on inter partes reexamination,
concluding that claims 1–21 of U.S. Patent No. 7,121,489
(“the ’489 patent”) would have been obvious over German
prior art reference DE 297 15 490 U1 (“Caterpillar”) (J.A.
131–44) and U.S. Patent No. 4,283,866 (“Ogawa”) (J.A.
145–51). See Genesis Attachments, LLC v. Allied Erecting
& Dismantling Co., No. IPR2014-001006, 2014 WL
7274949 (P.T.A.B. Dec. 19, 2014); (PTAB decision denying
rehearing) (J.A. 2–8).

An argument made by Allied was that the features of Ogawa and Caterpillar
could not be physically combined. This argument was rejected:

Contrary to Allied’s position, “it is not necessary that
[Caterpillar and Ogawa] be physically combinable to
render obvious the [’489 patent].” In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983); see also In re Etter, 756 F.2d
852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions
that Azure cannot be incorporated in Ambrosio are basically
irrelevant, the criterion being not whether the
references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings
of the prior art as a whole.”).

“The test for obviousness is
not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary
reference,” In re Keller, 642 F.2d 413, 425 (CCPA
1981). See also In re Mouttet, 686 F.3d 1322, 1332 (Fed.
Cir. 2012) (citing In re Keller, 642 F.2d at 425), but rather
whether “a skilled artisan would have been motivated to
combine the teachings of the prior art references to
achieve the claimed invention,” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1361 (Fed. Cir. 2007).

The CAFC also rejected Allied's "teaching away" argument:

Caterpillar does not expressly teach away from Ogawa.
“A reference may be said to teach away when a
person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in
the reference, or would be led in a direction divergent
from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).


There is no teaching
away from the combination of Caterpillar and Ogawa
because the combination does not utilize the pivot pin
attachment mechanism of Ogawa. There is no teaching
away in Caterpillar from using the Ogawa feature of two
movable jaws.



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