Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC
825 F.3d 1373
Fed. Cir.2016Background
- The ’489 patent claims a multiple-tool attachment system for demolition equipment featuring a bridge housing that encases a main pivot pin and permits quick attachment/detachment of jaw sets (allowing the pivot pin and housing to remain with the jaw set when removed).
- Caterpillar (DE 297 15 490) teaches a housing with two jaws where one jaw is immobilized relative to the housing and jaws can be replaced as a unit via side-wall mounting fixtures (quick-change functionality).
- Ogawa (U.S. Patent No. 4,283,866) teaches a convertible bucket with two movable members and linkage enabling a wide range of angular movement between the members.
- Genesis filed an inter partes reexamination petition challenging the ’489 patent as obvious over Caterpillar and Ogawa; Allied amended claims during reexamination to emphasize the bridge housing encasing the pivot pin and blades being movable relative to the housing.
- The PTO examiner initially allowed the amended claims but the PTAB reversed, finding claims unpatentable as obvious over Caterpillar in view of Ogawa (and for some claims in further view of Clark); Allied appealed to the Federal Circuit.
Issues
| Issue | Plaintiff's Argument (Allied) | Defendant's Argument (Genesis/PTAB) | Held |
|---|---|---|---|
| Whether claims 1–21 of the ’489 patent are obvious over Caterpillar plus Ogawa | PTAB relied on hindsight; combining would require nonobvious, massive redesign making device inoperable | A person of ordinary skill would be motivated to apply Ogawa’s two-movable-blade teaching to Caterpillar to gain wider angular movement while retaining quick-change mounting | Affirmed: claims would have been obvious |
| Whether there was a motivation to combine Caterpillar and Ogawa | No valid reasoning/evidence shows a motivation; modification is not obvious | Substantial evidence shows desirability of wider angular movement and that skilled artisans would modify Caterpillar accordingly | PTAB’s finding of motivation to combine supported by substantial evidence |
| Whether Caterpillar teaches away from combining with Ogawa | Caterpillar warns against using the main pivot pin both as pivot and as mounting, discouraging Ogawa’s approach | Caterpillar does not teach away because it criticizes a specific pivot-and-mount structure; Ogawa’s teaching (two movable jaws/wide movement) can be applied without adopting Ogawa’s exact pivot attachment or dual-cylinder structure | Caterpillar does not teach away; combination permissible |
| Whether Ogawa’s use of separate cylinders undermines the combination | Ogawa’s precise cylinder arrangement is incompatible with Caterpillar, so the combination is improper | Ogawa’s broader teaching of two movable blades and wide angular range is separate from its exact actuator arrangement; the claims would be obvious whether one or two cylinders are used | PTAB rightly treated Ogawa’s actuator details as nonessential; combination remains obvious |
Key Cases Cited
- Harmonic Inc. v. Avid Tech., 815 F.3d 1356 (Fed. Cir.) (obviousness is a mixed question of law and fact)
- In re Baxter Int’l, 678 F.3d 1357 (Fed. Cir.) (ultimate obviousness reviewed de novo; factual findings for substantial evidence)
- Graham v. John Deere Co., 383 U.S. 1 (Sup. Ct.) (framework for obviousness analysis)
- In re Kahn, 441 F.3d 977 (Fed. Cir.) (motivation to combine reviewed for substantial evidence)
- K/S Himpp v. Hear-Wear Techs., 751 F.3d 1362 (Fed. Cir.) (definition of substantial evidence)
- In re Keller, 642 F.2d 413 (CCPA) (obviousness not limited to physical combinability of references)
- In re Sneed, 710 F.2d 1544 (Fed. Cir.) (physical combinability not required for obviousness)
- In re Etter, 756 F.2d 852 (Fed. Cir.) (same principle supporting combination analysis)
- Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157 (Fed. Cir.) (advantages and disadvantages do not negate motivation to combine)
- In re Gurley, 27 F.3d 551 (Fed. Cir.) (teaching away standard)