Known Elements Alone Held Not Sufficient to Show Motivation for Combination Invention

In Virtek Vision International ULC v. Assembly Guidance Systems, Inc., the Federal Circuit held that known arrangements alone are insufficient to show a motivation to combine.

Virtek Vision International ULC (Virtek) appealed an inter partes review final written decision of the Patent Trial and Appeal Board (Board) holding claims of (‘734 patent) are unpatentable. Virtek owned the , which described an improved method for aligning a laser projector by projecting a template image on a work surface, and calibrating the relative position between the work surface and the laser projector. The related to an improved two-part alignment method. First, a non-laser light source flashed a light to determine the pattern of targets on the work surface. Then, a laser beam scanned and calculated the precise location of the targets to determine where the laser projector would project the laser template image. Claim 1 recited the following:

1. A method for aligning a laser projector for projecting a laser image onto a work surface, comprising the steps of:

• providing a laser projector assembly with a laser source for projecting a laser image onto a work surface, a secondary light source for illuminating the work surface, a photogrammetry device for generating an image of the work surface, and a laser sensor for sensing a laser beam;
• affixing reflective targets onto the work surface;
• transmitting light from the secondary light source toward the work surface and reflecting light toward the photogrammetry device from the reflective targets thereby identifying a pattern of the reflective targets on the work surface in a three dimensional coordinate system; and
• after identifying the pattern of the reflective targets on the work surface in the three dimensional coordinate system, scanning the targets with a laser beam generated by the laser source as directed by the identified pattern of the reflective targets for reflecting the laser beam toward the laser sensor and calculating a precise location of the targets from the reflected laser beam for directing the laser projector where to project the laser image onto the work surface.

Aligned Vision petitioned for inter partes review of the , asserting f unpatentability. 

The Board held in a final written decision that claims 1, 2, 5, 7 and 10–13 were unpatentable and would have been obvious over a combination of two prior art references. On appeal, the Federal Circuit reversed.

Virtek appealed the Board’s decision specifically that claims 1, 2, 5, 7 and 10–13 would have been obvious over the combination of U.S. Patent Application Publication No. US 2014/0160115 (Keitler) and PCT Publication No. WO2012/033892 (Briggs) and over the combination of Briggs and U.S. Patent US 8,040,525 (Bridges). Virtek asserted the Board’s determinations that one of ordinary skill would have been motivated to combine Keitler and Briggs and combine Briggs and Bridges were not shown by substantial evidence, to which the Federal Circuit agreed. The court observed that neither Keitler nor Bridges described identifying targets in a three-dimensional (3D) coordinate system. Instead, both prior art references disclosed determining an angular direction of each target. Aligned Vision cited Briggs’ disclosure of establishing the 3D coordinates of targets to supply this missing element.

The Board found that one of ordinary skill would have been motivated to use the 3D coordinate system described in Briggs as a substitute for the angular direction systems in Keitler or Bridges. The Board rationalized that this substitution would have been obvious to try because Briggs describes both 3D coordinates and angular directions.  

The Federal Circuit disagreed and concluded that the Board was incorrect as a matter of law with respect to the motivation to combine. The court explained:

• It 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.. . . . These disclosures, however, do not provide any reason why a skilled artisan would use 3D coordinates instead of angular directions in a system. . . . The mere fact that these possible arrangements existed in the prior art does not provide a reason that a skilled artisan would have substituted the one-camera angular direction system in Keitler and Bridges with the two-camera 3D coordinate system disclosed in Briggs.

The court further explained that there was no disagreement why one of ordinary skill would have made this substitution, except that the two different coordinate systems were “known to be used.” 

The Federal Circuit reasoned:

• the Supreme Court [has] explained, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” . . . [T]here must exist a motivation to combine various prior art references in order for a skilled artisan to make the claimed invention.

The court also observed that there was no proof that there were a limited number of known solutions, nor any proof of a design or market need. According to the court:

• In short, this case involves nothing other than an assertion that because two coordinate systems were disclosed in a prior art reference and were therefore “known,” that satisfies the motivation to combine analysis. That is an error as a matter of law. It does not suffice to simply be known. A reason for combining must exist.

The court, therefore, held that there was no substantial evidence to support the Board’s motivation to combine and reversed the obviousness determination of the .

Key Takeaways

In Virtek Vision International ULC v. Assembly Guidance Systems, Inc., the Federal Circuit reinforced the requirement that there must exist a motivation to combine prior art references for it to have been obvious to one of ordinary skill in the art to make the claimed invention. This case is a reminder for patent litigators when defending a patent, or practitioners when prosecuting a patent, about the necessity of the challenger to describe and provide proof of the reasons to combine two or more prior art references to demonstrate obviousness.

The reasons to combine can be shown by a challenger providing evidence such as market pressure, design need, common sense and/or reasonable expectation of success. However, it is not enough to merely show that one of ordinary skill had the knowledge needed to make the combination and the mere presence of the claim elements in the prior art is also not sufficient to show a motivation or reason to combine.

On the other hand, when challenging the validity and/or patentability of a claimed combination of elements, litigators must provide a reason or motivation to combine, along with specific proof therefor. This decision instructs that, when challenging the validity of a patent based on obviousness, clear evidence must be provided both that the elements were known in the art and that a skilled artisan would have been motivated to combine those prior art references as claimed in the challenged patent.

is a Partner in Manatt, Phelps and Phillip’s Intellectual Property Protection and Enforcement practice and is the author of Patent Prosecution: Law, Practice, and Procedure, 2024 Edition, and Constructing and Deconstructing Patents (2d Edition 2016).

Virtek Vision International ULC v. Assembly Guidance Systems, Inc., 97 F.4th 882, 2024 USPQ2d 572 (Fed. Cir. 2024).

Id., 97 F.4 at 885.

Id., 97 F.4 at 885.

Id., 97 F.4 at 886.

Id., 97 F.4 at 886–87.

Id., 97 F.4th at 887 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007)).

Id., 97 F.4 at 888.