Virtek International ULC v. Assembly Guidance Systems, Inc., DBA Aligned Vision

Docket No. 2022-1998, -2022 (IPR2021-00062) (https://cafc.uscourts.gov/opinions-orders/22-1998.OPINION.3-27-2024_2292085.pdf)

MOORE, HUGHES, STARK

March 27, 2024

Brief Summary:  IPR obviousness finding reversed due to no motivation to combine; IPR non-obviousness finding affirmed as substantial evidence supported conclusion of no motivation to combine.

Summary:   Virtek appealed USPTO Board IPR holding that certain claims of Virtek’s US 10,052,734 directed to a “method for aligning a laser projector with respect to a work surface” to be invalid for obviousness.  ­­­Aligned Vision (AV) appealed the finding it did not show certain claims to be invalid for obviousness.  Regarding the obviousness finding, “the Board found a skilled artisan would have been motivated to use the 3D coordinate system disclosed in Briggs instead of the angular direction systems in” the prior art, that “this combination would have been obvious to try because Briggs discloses both 3D coordinates and angular directions.”  The FC panel concluded this analysis was erroneous, writing that “[i]t does not suffice to meet the motivation to combine requirement to recognize that two alternative arrangements such as an angular direction system using a single camera and a 3D coordinate system using two cameras were both known in the art” and the “disclosures…do not provide any reason why a skilled artisan would” do so (Belden, FC 2015 (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”)).  Further, the FC panel wrote, “[t]he mere fact that these possible arrangements existed in the prior art does not provide a reason” for the substitution, also noting AV’s expert did not provide a reason or an “argument about common sense” (KSR, US 2007 (“If [the reasoning] to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”))  The FC panel also wrote that “KSR did not do away with the requirement that there must exist a motivation to combine various prior art references in order for a skilled artisan to make the claimed invention.”  The Board decision of obviousness was therefore reversed. 

AV’s appeal was rejected as the FC panel found the Board correctly concluded AV did not provide substantial evidence of a motivation to combine (AV’s arguments that “because the additional elements in the dependent claims are disclosed in ’094 Rueb and are used for their intended purposes, a skilled artisan would have been motivated to combine the references as a matter of ‘common sense’” not being supported by evidence; KSR (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. . . . [I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”)).  Thus, this part of the Board’s decision was affirmed.

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.