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ARTICLE · 08 JULY 2016

Motivation To Combine And Teaching Away: Viable Tools, But With Limits

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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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...

United StatesIntellectual Property
Elliot C. Cook
Elliot C. Cook
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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.

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