In Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, Appeal No. 2015-1533, the Federal Circuit affirmed the PTAB’s invalidity finding based on obviousness.
Genesis filed a petition for inter partes reexamination asserting that Allied’s patent to a multiple-tool attachment system would have been anticipated by, or made obvious over, the Caterpillar and Ogawa prior art references. During reexamination, Allied amended the claims and added new claims, which were initially allowed by the examiner, but were then ruled as obvious by the PTAB on appeal.
On appeal to the Federal Circuit, Allied first challenged the PTAB’s finding of a motivation to combine the Caterpillar and Ogawa references, arguing that the combination would require reconstruction of the device disclosed in Caterpillar. The Federal Circuit explained that it was not necessary for the Caterpillar and Ogawa systems to be physically combinable to render the patent obvious. Rather, the test for obviousness is whether a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention. Second, Allied asserted that Caterpillar taught away from combining its teachings with Ogawa. But the Federal Circuit found that Caterpillar’s criticism of Ogawa’s design did not rise to the level of an express teaching away.