Reference Does Not Teach Away from Claimed Invention Merely by Expressing a General Preference or Describing a Modification as Somewhat Inferior

Author: Rob C. MacKichan
Editor: Jeff T. Watson

In Gator Tail, LLC v. Mud Buddy LLC, Nos. 14-1747, -1748 (Fed. Cir. June 22, 2015), the Federal Circuit affirmed the district court’s determination that claims for a “mud motor” (a boat motor designed for shallow waters) were invalid as obvious. The Court rejected Gator Tail’s argument that a reference taught away from the use of the horizontal engine claimed in the asserted patents. The Court explained that a reference does not teach away merely by expressing a general preference or by describing a modification as somewhat inferior. In this case, the Court noted that the reference did not suggest that using a horizontal engine would render the motor inoperable; rather, it merely described the benefits of its vertical engine when compared to the dominant prior art—the long-tail motor. The Court found that these statements would not deter one of ordinary skill from combining features of the long-tail motor with the reference.

The Court also found that the district court erred by failing to presume that commercial success of Gator Tail’s motors was a function of the claimed patent, but held that any error in the district court’s nexus analysis was harmless because Gator Tail provided only evidence of the number of motors sold per year, without additional information on the size of the mud motor market.


DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. Additional disclaimer information.

Tagged ,

Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: