Conclusory Assertions Won't Cut It: Federal Circuit Provides Further Insight Into The Motivation To Combine Analysis

SM
Sheppard Mullin Richter & Hampton

Contributor

Sheppard Mullin is a full service Global 100 firm with over 1,000 attorneys in 16 offices located in the United States, Europe and Asia. Since 1927, companies have turned to Sheppard Mullin to handle corporate and technology matters, high stakes litigation and complex financial transactions. In the US, the firm’s clients include more than half of the Fortune 100.
In Virtek Visions international ULC v. Assembly Guidance Systems, Inc., DBA Aligned Vision Nos. 2022-1998, 2022-2022 (Fed Cir. Mar. 27, 2024), the Federal Circuit reviewed the Patent...
United States Intellectual Property
To print this article, all you need is to be registered or login on Mondaq.com.

In Virtek Visions international ULC v. Assembly Guidance Systems, Inc., DBA Aligned Vision Nos. 2022-1998, 2022-2022 (Fed Cir. Mar. 27, 2024), the Federal Circuit reviewed the Patent Trial and Appeal Board's findings regarding patent obviousness for U.S. Patent No. 10,052,734. Specifically, appellate review of the Board's findings related to the motivation to combine analysis.

Background

Aligned Vision petitioned for inter partes review of all claims of the '734 patent, asserting that claims 1, 2, 5, 7, and 10-13 were obvious over Keitler and Briggs (Ground 1), and over Briggs and Bridges (Ground 3). Aligned Visions also argued that claims 3-6 and 8-12 were obvious over Keitler, Briggs, and '094 Rueb (Ground 2), and over Briggs, Bridges, and '094 Rueb (Ground 4).

The Board issued a final written decision holding claims 1, 2, 5, 7, and 10-13 unpatentable as obvious under Grounds 1 and 3, and claims 3, 4, 6, 8, and 9 not unpatentable under Grounds 2 and 4. Virtek appealed the Board's ruling with respect to the unpatentability of claims 1, 2, 5, 7, and 10-13, and Aligned Vision cross-appealed the Board's ruling that claims 3, 4, 6, 8, and 9 are not unpatentable.

Issues

  1. Whether the Board erred in finding substantial evidence supporting a motivation to combine Keitler and Briggs (Ground 1), and Briggs and Bridges (Ground 3)?
  2. Whether the Board erred in finding that Aligned Vision failed to prove a motivation to combine Keitler, Briggs, and '094 Rueb (Ground 2), and Briggs, Bridges, and '094 Rueb (Ground 4)?

Holdings

  1. Yes. The Board erred in finding that substantial evidence supported a motivation to combine for both Grounds 1 and 3. The Federal Circuit reversed the Board's determination that claims 1, 2, 5, 7, and 10-13 were obvious.
  2. No. Substantial evidence supported the Board's findings that Aligned Vision failed to show a motivation to combine for both Grounds 2 and 4. The Federal Circuit affirmed the Board's findings as to Aligned Vision's failure to prove that claims 3, 4, 6, 8, and 9 were obvious.

Reasoning

(1) Claim 1 of the '734 patent recites "identifying a pattern of the reflective targets on the work surface in a three dimensional coordinate system." The primary references relied on by Aligned Vision in Grounds 1 and 3 disclose determining an angular direction of the target as opposed to determining the 3D coordinates of targets as required by claim 1. Aligned Vision relied on the secondary reference of Briggs to supply the missing claim limitation because Briggs discloses determining 3D coordinates of targets. The Board found a motivation to combine Keitler and Briggs (Ground 1) and Bridges and Briggs (Ground 3) because the combinations would have been obvious to try based on the fact that Briggs disclosed both 3D coordinates and angular directions.

However, the Federal Circuit found that the Board erred as a matter of law with respect to the motivation to combine. That both 3D coordinates and angular directions were disclosed in the prior art does not suffice as a basis for motivation to combine without further explanation or reasoned argument as to why a skilled artisan would substitute angular directions for a 3D coordinate system. As the Federal Circuit explained, "[t]here was no argument in the petition regarding why a skilled artisan would make this substitution—other than that the two different coordinate systems were 'known to be used'." In addition, Allied Vision's expert testified 11 times that he did not provide a reason to combine the references in his expert declaration. The Federal Circuit emphasized that providing a bare assertion that the claim elements sought to be combined were "known in the art" does not suffice to meet the legal standard under KSR for a motivation to combine. Instead, a petitioner must provide a reason that a person skilled in the art would have done so. As a result, the Federal Circuit reversed the Board's findings as to obviousness for claims 1, 2, 5, 7, and 10-13 of the'734 patent.

(2) On cross-appeal, Aligned Vision argued that the Board's finding of no motivation to combine was not supported by substantial evidence because a skilled artisan would have been motivated to combine the references as a matter of "common sense." However, the Federal Circuit did not consider the argument relating to "common sense" because Aligned Vision failed to raise the argument before the Board. Instead, the Federal Circuit considered the argument that Aligned Vision made to the Board, i.e., that the claim elements are known in the prior art and therefore a motivation to combine exists. Similar to the rationale provided for Grounds 1 and 3, the Federal Circuit rejected this argument as conclusory and explained that the testimony of Aligned Vision's expert failed "to address why or whether a skilled artisan would have been motivated to combine the camera disclosed in '094 Rueb with Keitler and Briggs." As such, substantial evidence supported the Board's finding that Aligned Vision failed to show a motivation to combine for both Grounds 2 and 4 and the Federal Circuit affirmed the Board's ultimate finding that claims 3, 4, 6, 8, and 9 were not unpatentable.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

See More Popular Content From

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More