The Federal Circuit affirmed the PTAB’s finding in an inter partes reexamination that the claims of Allied’s patent, US 7,121,489, which is directed to heavy machinery tools, are obvious. The Federal Circuit rejected Allied’s argument that because “the modification of Caterpillar [a prior art reference] in view of Ogawa [another prior art reference] would  result in substantial redesign and reconstruction,” the PTAB erred in finding the motivation to combine those references. The Federal Circuit reasoned that the prior art references need not be “physically combinable to render obvious the ’489 patent,” and that because “a given course of action often has simultaneous advantages and disadvantages, [it] does not necessarily obviate motivation to combine. 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.’” The Federal Circuit also rejected Allied’s assertion that Caterpillar expressly teaches away from Ogawa. Just because Caterpillar criticized the precise structure of Ogawa, the Federal Circuit found that it did not necessarily teach away from using Ogawa.
Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, Case No. 2015-1533 (June 15, 2016); Opinion by: Wallach, joined by Newman and Dyk; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board. Read the full opinion here.