Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Virtek Vision International ULC v. Assembly Guidance Systems, Inc. (d/b/a Aligned Vision), Nos. 2022-1998, -2022 (Mar. 27, 2024), overturning a Patent Trial and Appeal Board determination that certain claims of Virtek’s challenged patent, were unpatentable, while affirming the patentability of other claims.
Virtek’s challenged patent focuses on aligning a laser projector with a work surface, purportedly improving efficiency. Aligned Vision challenged the patent’s validity through Inter Partes Review on four grounds. Claim 1 of the patent involves identifying reflective targets on a work surface in a three-dimensional coordinate system. Keitler and Bridges, references cited for grounds 1 and 3, lack this feature, relying instead on determining the angular direction of targets. Aligned Vision cited Briggs for the 3D coordinate system, and the Board agreed that the combination rendered the challenged claims obvious because Briggs mentions both use of 3D coordinates and angular directions. As for grounds 2 and 4, the Board held there was no motivation to combine the asserted references and, therefore, the challenged claims were not unpatentable on those grounds. Virtek appealed and Aligned Vision cross-appealed.
The Federal Circuit reversed as to the appeal and affirmed as to the cross-appeal. On the appeal of grounds 1 and 3, the Court explained that mere acknowledgment of different options in prior art does not justify their combination without a reason for combining them. The Court held the Board erred in relying on the fact that both measurement systems were known in the prior art because that fact alone does not suffice to explain why a skilled artisan would have been motivated to substitute one for the other. The Court also highlighted the absence of arguments in the petition articulating an alleged motivation, such as common sense or market pressure.
On the cross-appeal addressing grounds 2 and 4, the Court rejected Aligned Vision’s assertion that the Board erred in finding no motivation to combine. The Court noted that, although on appeal Aligned Vision argued the motivation to combine the references is a matter of “common sense,” Aligned Vision did not argue or present evidence concerning common sense to the Board. The Court held that the arguments Aligned Vision made to the Board, which focused on the fact that the claim elements were known in the prior art, were insufficient.
