Monday, November 2, 2009

Prior Art Teachings May be Combined to Show Obviousness Even if Prior Art Structures Cannot be Physically Combined

In granting defendants' motion for summary judgment of invalidity for obviousness, the court rejected plaintiff's argument that it "would not have been obvious to a person of ordinary skill in the art to combine [prior art references] because of structural differences" between the references. "Contrary to Plaintiffs' assertions . . . it is not necessary to show that each and every element of a prior art reference can be incorporated into an invention in order to make that invention obvious. A reference can be considered for everything it teaches, not only for the invention it claims. . . . It is thus unnecessary for Defendants to establish that the appropriate elements of [one prior art reference] could be incorporated into [another prior art reference] without altering their structures."

Tokai Corp et al. v. Easton Enterprises Inc et al., 5-07-cv-00883
(CACD October 23, 2009, Order)(Phillips, J.)

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