In Virtek Vision Int’l. ULC v. Assembly Guidance Systems, Inc. the Federal Circuit reversed in part the PTAB’s final written decision in an IPR petition filed by Assembly Guidance, on the basis that the petition failed to identify a motivation to combine elements present in the prior art, stating that: “A reason for combining must exist.” Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc., 97 F.4th 882, 888 (Fed. Cir. 2024). The Court determined that Assembly Guidance had failed to provide any reasoning why one skilled in the art would be motivated to combine the disclosures of the prior art references, and therefore did not show that the challenged claims were unpatentable.

The technology at issue relates to methods of aligning laser projectors used in manufacturing processes. Specifically, U.S. Patent No. 10,052,734 (“the ’734 patent”), is directed at an improved method to align lasers to project a template image onto 3D work surfaces. Existing laser projectors used reflective targets on a 3D work surface to measure coordinates relative to the surface, then locate the position of the projector relative to the work surface, and then required frequent position checks and re-alignment to maintain accuracy.  The process was slow and inefficient.  The invention in the ’734 patent sought to improve the prior-art process by creating a two-step alignment process using a 3D coordinate system and two different lights. According to the invention, a non-laser light flashes a light onto the 3D work surface to show a pattern of targets on the work surface. ’734 patent at 2:2–9, 3:52–56, 4:14–35. Then, a laser beam scans the targets and calculates the precise location to direct the laser projector where to project the laser template image. Id. at 2:9–15, 4:35–57.   

The petition relied on two primary references Keitler and Bridges, and one secondary reference, Briggs.  Keitler and Bridges both disclose certain elements of the claimed method, but neither discloses identifying targets in a 3D coordinate system as claimed. Virtek Vision at 885. The PTAB determined that Briggs discloses a laser projector system with different embodiments of laser tracker systems including (a) one that uses two cameras to determine the 3D coordinates of a target, and (b) another that uses one camera to determine angular measurements of a target. Id. Briggs, however, does not disclose any reason why a person having ordinary skill in the art (“PHOSITA”) would use one option over the other. Aligned Vision relied on Briggs’ disclosure of determining the 3D coordinates of targets to supply this missing element but did not argue why a PHOSITA would make such a substation.

The Federal Circuit determined that this was not sufficient to show a motivation to combine. Relying on KSR Int’l Co. v. Teleflex Inc., and noting that the Supreme Court’s enumerated reasons for a motivation to combine can include at least “design need or market pressure to solve a problem and [that] there are a finite number of identified, predictable solutions” because in those scenarios “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” Virtek Vision at 887 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).  Conversely, here, the Court noted: there was no argument about common sense in the petition; there was no evidence that there were a finite number of identified, predictable solutions; and there was no evidence of a design need or market pressure. Virtek Vision at 888.

Instead, the Court held that 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.”  Id.  However, “that is an error as a matter of law.  It does not suffice to simply be known.  A reason for combining must exist.”  Id. The petitioner’s showing that the claim elements were known in the prior art was not sufficient to show motive to combine.

Takeaways

Petitioners seeking to have the PTAB determine that patent claims are unpatentable should take caution to provide explicit arguments as to a PHOSITA’s motivation to combine prior art references.  Merely stating “it is obvious to try” is insufficient absent further arguments and supporting evidence.  Likewise, even if the reason is “common sense” then there must be some evidence in the record as to why combining the prior art would be common sense to the PHOSITA.