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.