Assembly (Aligned Vision) petitioned for IPR of Virtek’s patent. The challenged claims relate to an improved method for aligning a laser projector with respect to a work surface. In particular, the patent discloses an improved two-part alignment method. Claim 1 includes a step of “identifying a pattern of the reflective targets on the work surface in a three-dimensional coordinate system.”
The Board found that Aligned Vision had shown some challenged claims were unpatentable but that it had not made a sufficient showing as to certain dependent claims. In each of the two grounds challenging claim 1, Aligned Vision relied on a combination of two references (Keitler and Briggs; Briggs and Bridges). Neither Keitler nor Bridges discloses identifying targets in a 3D coordinate system as claimed, but instead each discloses determining an angular direction of each target. Aligned Vision relied on Bridges for its disclosure of determining the 3D coordinates of targets. The Board found that, because Briggs discloses both 3D coordinates and angular directions, it would have been obvious to try using Briggs’s 3D coordinate system instead of the angular direction systems in Keitler or Bridges.
On appeal, the Federal Circuit held the Board’s findings as to a skilled artisan’s motivation to make the proposed combinations were not supported by substantial evidence. According to the court, “[i]t does not suffice [for two alternative arrangements] to simply be known. A reason for combining must exist.” The court further emphasized 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.” But neither Aligned Vision nor the Board articulated any reason for the substitution or any advantages for doing so. There was no argument or evidence that the substitution would have been common sense, nor any evidence that there were only a finite number of identified, predictable solutions, nor any evidence of a design need or market pressure. The court found similar failures in Aligned Vision’s evidence of a motivation to combine for the dependent claims that the Board found to be not shown to be unpatentable in the IPR.
This article appeared in the 2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions report.
Related Services
Receive insights from the most respected practitioners of IP law, straight to your inbox.
Subscribe for Updates