Case: 22-1998 Document: 48 Page: 1 Filed: 03/27/2024
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`VIRTEK VISION INTERNATIONAL ULC,
`Appellant
`
`v.
`
`ASSEMBLY GUIDANCE SYSTEMS, INC., DBA
`ALIGNED VISION,
`Cross-Appellant
`______________________
`
`2022-1998, 2022-2022
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2021-
`00062.
`
`______________________
`
`Decided: March 27, 2024
`______________________
`
`JACOB DANIEL KOERING, Miller, Canfield, Paddock &
`Stone, PLC, Chicago, IL, argued for appellant. Also repre-
`sented by GREGORY D. DEGRAZIA, ANITA CARLA MARINELLI,
`Detroit, MI.
`
` WILLIAM ERIC HILTON, Gesmer Updegrove LLP, Bos-
`ton, MA, argued for cross-appellant. Also represented by
`TODD A. GERETY.
` ______________________
`
`
`

`

`Case: 22-1998 Document: 48 Page: 2 Filed: 03/27/2024
`
`2
`
`VIRTEK VISION INTERNATIONAL ULC v.
` ASSEMBLY GUIDANCE SYSTEMS, INC.
`
`Before MOORE, Chief Judge, HUGHES and STARK, Circuit
`Judges.
`
`MOORE, Chief Judge.
`Virtek Vision International ULC (Virtek) appeals an
`inter partes review final written decision of the Patent Trial
`and Appeal Board holding claims 1, 2, 5, 7, and 10–13 of
`U.S. Patent No. 10,052,734 are unpatentable. Assembly
`Guidance Systems, Inc. d/b/a Aligned Vision (Aligned Vi-
`sion) cross-appeals the Board’s holding that Aligned Vision
`failed to prove claims 3, 4, 6, 8, and 9 of the ’734 patent are
`unpatentable. We reverse as to the appeal and affirm as to
`the cross-appeal.
`
`BACKGROUND
`Virtek owns the ’734 patent, which discloses an im-
`proved method for aligning a laser projector with respect to
`a work surface. ’734 patent at 1:15–19. Lasers are often
`used to project a template image onto a work surface to di-
`rect manufacturing processes. Id. at 1:23–28. To accu-
`rately project the template onto a three-dimensional work
`surface, there must be “precise calibration of the relative
`position between the work surface and the laser projector.”
`Id. at 1:35–38. In other words, the laser projector must be
`aligned. In the prior art, laser projectors would be aligned
`“by locating reflective targets on the work surface, measur-
`ing the target coordinates relative to a three-dimensional
`coordinate system of the work surface, and then locating
`the position of the projector relative to the work surface.”
`Id. at 1:38–52. This scanning process is periodically
`stopped “to check for variation in the projected pattern lo-
`cation due to a change in the position of the projector rela-
`tive to the tool.” Id. at 1:44–49. If any variation is detected,
`the targets are relocated and the laser projector must be
`realigned, rendering the process “slow and inefficient.” Id.
`at 1:49–57.
`In light of these deficiencies, the ’734 patent discloses
`an improved two-part alignment method. Id. at 1:66–2:29.
`
`

`

`Case: 22-1998 Document: 48 Page: 3 Filed: 03/27/2024
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`VIRTEK VISION INTERNATIONAL ULC v.
`ASSEMBLY GUIDANCE SYSTEMS, INC.
`
`3
`
`In the first step, a secondary (i.e., non-laser) light source
`flashes a light onto the work surface to determine the pat-
`tern of targets on the work surface. Id. at 2:2–9, 3:52–56,
`4:14–35. In the second step, a laser beam scans the targets
`as directed by the identified pattern and calculates the pre-
`cise location of the targets to direct the laser projector
`where to project the laser template image. Id. at 2:9–15,
`4:35–57. Claim 1, the only independent claim in the ’734
`patent, recites:
`1. A method for aligning a laser projector for pro-
`jecting a laser image onto a work surface, compris-
`ing 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 sen-
`sor for sensing a laser beam;
`affixing reflective targets onto the work
`surface;
`transmitting light from the secondary light
`source toward the work surface and reflect-
`ing light toward the photogrammetry de-
`vice 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 di-
`mensional 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 reflect-
`ing the laser beam toward the laser sensor
`and calculating a precise location of the
`
`

`

`Case: 22-1998 Document: 48 Page: 4 Filed: 03/27/2024
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`4
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`VIRTEK VISION INTERNATIONAL ULC v.
` ASSEMBLY GUIDANCE SYSTEMS, INC.
`
`targets from the reflected laser beam for di-
`recting the laser projector where to project
`the laser image onto the work surface.
`Id. at 5:35–6:4 (emphases added).
`Aligned Vision petitioned for inter partes review of all
`claims of the ’734 patent, asserting four grounds of un-
`patentability. Specifically, Aligned Vision argued claims 1,
`2, 5, 7, and 10–13 would have been obvious over Keitler and
`Briggs (Ground 1), and over Briggs and Bridges (Ground
`3). It also argued claims 3–6 and 8–12 would have been
`obvious over Keitler, Briggs, and ’094 Rueb (Ground 2), and
`over Briggs, Bridges, and ’094 Rueb (Ground 4).
`The Board instituted and issued a final written deci-
`sion holding claims 1, 2, 5, 7, and 10–13 unpatentable and
`claims 3, 4, 6, 8, and 9 not unpatentable. Assembly Guid-
`ance Sys., Inc. v. Virtek Vision Int’l ULC, No. IPR2021-
`00062, 2022 WL 1463734 (P.T.A.B. May 6, 2022) (Decision).
`The Board held Aligned Vision had proven unpatentability
`based on Grounds 1 and 3 but failed to prove unpatentabil-
`ity based on Grounds 2 and 4. Id. at *7–24. Virtek appeals
`and Aligned Vision cross-appeals. We have jurisdiction un-
`der 28 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`Obviousness is a question of law based on underlying
`facts. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1326 (Fed.
`Cir. 2016). We review the Board’s ultimate determination
`of obviousness de novo and its underlying findings of fact
`for substantial evidence. Pers. Web Techs., LLC v. Apple,
`Inc., 848 F.3d 987, 991 (Fed. Cir. 2017). Whether a skilled
`artisan would have been motivated to combine prior art ref-
`erences is a question of fact. Ariosa Diagnostics v. Verinata
`Health, Inc., 805 F.3d 1359, 1364 (Fed. Cir. 2015).
`GROUNDS 1 AND 3
`I.
`In the primary appeal, Virtek challenges the Board’s
`determinations that claims 1, 2, 5, 7, and 10–13 would have
`
`

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`Case: 22-1998 Document: 48 Page: 5 Filed: 03/27/2024
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`VIRTEK VISION INTERNATIONAL ULC v.
`ASSEMBLY GUIDANCE SYSTEMS, INC.
`
`5
`
`been obvious over Keitler and Briggs (Ground 1), and over
`Briggs and Bridges (Ground 3). Virtek argues the Board’s
`findings that a skilled artisan would have been motivated
`to combine Keitler and Briggs (Ground 1), and Briggs and
`Bridges (Ground 3) are not supported by substantial evi-
`dence. We agree.
`Claim 1 recites “identifying a pattern of the reflective
`targets on the work surface in a three dimensional coordi-
`nate system.” See ’734 patent at 5:47–52. Neither Keitler
`(Ground 1) nor Bridges (Ground 3) discloses identifying
`targets in a 3D coordinate system as claimed. Instead, both
`references disclose determining an angular direction of
`each target. J.A. 707–08 ¶ 80 (Keitler); J.A. 737 at 17:20–
`39 (Bridges). Aligned Vision relied on Briggs’ disclosure of
`determining the 3D coordinates of targets to supply this
`missing element for both Grounds 1 and 3. J.A. 194–96,
`214–16 (Petition).
`With respect to both grounds, the Board found a skilled
`artisan would have been motivated to use the 3D coordi-
`nate system disclosed in Briggs instead of the angular di-
`rection systems in Keitler or Bridges. Decision, 2022 WL
`1463734, at *9, *18–19. The Board reasoned this combina-
`tion would have been obvious to try because Briggs dis-
`closes both 3D coordinates and angular directions. Id.
`We conclude that the Board erred as a matter of law
`with regard to the motivation to combine. It does not suf-
`fice to meet the motivation to combine requirement to rec-
`ognize 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. Briggs discloses a laser projector system with dif-
`ferent embodiments of laser tracker systems—one that
`uses two cameras to determine the 3D coordinates of a tar-
`get, J.A. 757 ¶ 49, and another that uses one camera to de-
`termine angular measurements of a target, J.A. 758 ¶ 51.
`Briggs discloses these two measurement options “may be
`applied to any computer controlled aiming system.” J.A.
`
`

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`Case: 22-1998 Document: 48 Page: 6 Filed: 03/27/2024
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`6
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`VIRTEK VISION INTERNATIONAL ULC v.
` ASSEMBLY GUIDANCE SYSTEMS, INC.
`
`754 ¶ 42. These disclosures, however, do not provide any
`reason why a skilled artisan would use 3D coordinates in-
`stead of angular directions in a system. See Belden Inc. v.
`Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
`(“[O]bviousness concerns whether a skilled artisan not only
`could have made but would have been motivated to make
`the combinations or modifications of prior art to arrive at
`the claimed invention.”).
`The mere fact that these possible arrangements existed
`in the prior art does not provide a reason that a skilled ar-
`tisan would have substituted the one-camera angular di-
`rection system in Keitler and Bridges with the two-camera
`3D coordinate system disclosed in Briggs. There was no
`argument in the petition regarding why a skilled artisan
`would make this substitution—other than that the two dif-
`ferent coordinate systems were “known to be used.”
`J.A. 194–96, 214–16. The petition does not argue Briggs
`articulates any reason to substitute one for another or any
`advantages that would flow from doing so. Nor does Dr.
`Mohazzab, Aligned Vision’s expert, articulate any reason
`why a skilled artisan would combine these references. In
`his declaration, he testified “it would have been obvious” to
`use the 3D coordinates instead of angular measurements
`because “both such measurement systems were known.”
`J.A. 815 ¶ 51; J.A. 837 ¶ 93.1 Moreover, he stated eleven
`
`1 The parties appear to dispute whether the Board
`relied on Dr. Mohazzab’s declaration in support of its moti-
`vation to combine findings. See Oral Arg. at 3:31–4:50,
`13:38–57, 23:55–24:57, https://oralarguments.cafc.uscourt
`s.gov/default.aspx?fl=22-1998_12052023.mp3. The Board
`explained that its motivation to combine findings were
`based on “the support provided in the Petition.” Decision,
`2022 WL 1463734, at *9 (citing J.A. 194–96); id. at *19 (cit-
`ing J.A. 210, 215–16). There is no dispute the petition re-
`lied upon Dr. Mohazzab’s declaration. J.A. 194–96, 210,
`215–16; Oral Arg. at 4:12–20.
`
`

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`Case: 22-1998 Document: 48 Page: 7 Filed: 03/27/2024
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`VIRTEK VISION INTERNATIONAL ULC v.
`ASSEMBLY GUIDANCE SYSTEMS, INC.
`
`7
`
`times that he did not provide any reason to combine the
`references in his expert declaration. See Mohazzab Dep.
`Tr. at 53:15–20 (testifying “I’m not sure I can find” a reason
`to combine Briggs and Keitler in declaration), 89:24–90:5
`(testifying “I do not state any reasons” to combine Bridges
`and Briggs in declaration), 56:6–10, 59:25–60:21, 62:1–5,
`62:12–16, 64:1–11, 65:4–11, 88:25–89:4, 91:19–24, 93:9–14;
`cf. id. at 55:15–17 (testifying “[y]ou don’t have to combine”
`Keitler and Briggs), 88:11–89:15
`(testifying Briggs
`“[d]oesn’t need to be combined” with Bridges).2
`KSR provides an important understanding of the cir-
`cumstances in which limitations from different references
`can be combined to conclude that a claimed invention
`would have been obvious. In KSR, the Supreme Court ex-
`plained, “[w]hen there is a design need or market pressure
`to solve a problem and there are a finite number of identi-
`fied, predictable solutions, a person of ordinary skill has
`good reason to pursue the known options within his or her
`technical grasp.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 421 (2007). “If this leads to the anticipated success, it
`is likely the product not of innovation but of ordinary skill
`and common sense.” Id. 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.
`
`
`2 Virtek appeals the Board’s denial of its motion to
`exclude Dr. Mohazzab’s expert declaration. We need not
`decide whether the Board abused its discretion in declining
`to exclude the declaration because the conclusory asser-
`tions in Dr. Mohazzab’s declaration do not provide substan-
`tial evidence for finding a motivation to combine.
`
`

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`Case: 22-1998 Document: 48 Page: 8 Filed: 03/27/2024
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`VIRTEK VISION INTERNATIONAL ULC v.
` ASSEMBLY GUIDANCE SYSTEMS, INC.
`
`Here, there was no argument about common sense in
`the petition or in Dr. Mohazzab’s declaration.3 See
`J.A. 194–96, 214–16; J.A. 815 ¶ 51; J.A. 837 ¶ 93. There
`was no evidence that there are a finite number of identi-
`fied, predictable solutions. There is no evidence of a design
`need or market pressure. In short, this case involves noth-
`ing 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.
`For the foregoing reasons, we conclude substantial ev-
`idence does not support the Board’s motivation to combine
`findings for both Grounds 1 and 3. We reverse the Board’s
`obviousness determination with respect to claims 1, 2, 5, 7,
`and 10–13 of the ’734 patent.
`
`
`3 Dr. Mohazzab attempted to present an argument
`about common sense during his deposition. See, e.g., Mo-
`hazzab Dep. Tr. at 154:5–16 (testifying “the person who is
`skilled in the art would have all the knowledge around this,
`this technique[] to put them together and make a system”
`and “would know, specifically, as a matter of choice, what
`kind of design to choose”). Even assuming Dr. Mohazzab
`articulated a sufficient motivation to combine at his depo-
`sition, a petitioner may not, in its reply and accompanying
`expert declaration, rely “on an entirely new rationale to ex-
`plain why one of skill in the art would have been motivated
`to combine.” Intelligent Bio-Sys., Inc. v. Illumina Cam-
`bridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). The
`same restriction must apply to expert depositions that take
`place after the service of the reply and declaration. More-
`over, neither party has argued the Board’s motivation to
`combine findings are supported by Dr. Mohazzab’s deposi-
`tion testimony.
`
`

`

`Case: 22-1998 Document: 48 Page: 9 Filed: 03/27/2024
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`VIRTEK VISION INTERNATIONAL ULC v.
`ASSEMBLY GUIDANCE SYSTEMS, INC.
`
`9
`
`II. GROUNDS 2 AND 4
`In its cross-appeal, Aligned Vision challenges the
`Board’s determinations that it failed to prove dependent
`claims 3, 4, 6, 8, and 9 would have been obvious over Keit-
`ler, Briggs, and ’094 Rueb (Ground 2), and over Briggs,
`Bridges, and ’094 Rueb (Ground 4).4 In its petition, Aligned
`Vision argued ’094 Rueb disclosed the additional limita-
`tions in the dependent claims. See, e.g., J.A. 205–06 (point-
`ing to ’094 Rueb as disclosing a camera with a multi
`megapixel sensor as recited in claim 3). The Board found
`Aligned Vision failed to show a motivation to combine ’094
`Rueb with the remaining references. Decision, 2022 WL
`1463734, at *17–18.
`Aligned Vision argues the Board’s finding of no motiva-
`tion to combine is not supported by substantial evidence.
`According to Aligned Vision, because the additional ele-
`ments in the dependent claims are disclosed in ’094 Rueb
`and are used for their intended purposes, a skilled artisan
`would have been motivated to combine the references as a
`matter of “common sense.”
`Aligned Vision never argued before the Board that it
`would have been common sense to combine the references
`as claimed. Nor did it offer any evidence regarding com-
`mon sense. Aligned Vision’s argument, both before the
`Board and on appeal, is instead grounded in the fact that
`the claim elements are known in the prior art. See, e.g.,
`J.A. 445–46 (Petitioner’s Reply) (arguing the dependent
`claim elements “were commonly known and would have
`been obvious to combine as indicated”). But this alone does
`not show a motivation to combine. See KSR, 550 U.S. at
`418 (“[A] patent composed of several elements is not proved
`obvious merely by demonstrating that each of its elements
`
`4 Aligned Vision raises the same arguments with re-
`spect to Grounds 2 and 4. For simplicity, we address
`Ground 2 as representative.
`
`

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`VIRTEK VISION INTERNATIONAL ULC v.
` ASSEMBLY GUIDANCE SYSTEMS, INC.
`
`was, independently, known in the prior art. . . . [I]t can be
`important to identify a reason that would have prompted a
`person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does.”).
`The only evidence presented by Aligned Vision in sup-
`port of a motivation to combine was the testimony of Dr.
`Mohazzab. With respect to claim 3, Dr. Mohazzab testified
`’094 Rueb discloses a camera with a multi megapixel sen-
`sor and a skilled artisan “would also have known to use a
`camera with a multi megapixel sensor in mid-2016.” J.A.
`825–26 ¶ 72. This conclusory testimony fails to address
`why or whether a skilled artisan would have been moti-
`vated to combine the camera disclosed in ’094 Rueb with
`Keitler and Briggs. Aligned Vision similarly failed to pre-
`sent any evidence as to why a skilled artisan would have
`been motivated to combine the teachings of ’094 Rueb with
`the other references to meet the subject matter of claims 4,
`6, 8, and 9.
`We conclude substantial evidence supports the Board’s
`findings that Aligned Vision failed to show a motivation to
`combine for both Grounds 2 and 4. We affirm the Board’s
`determination that Aligned Vision failed to prove claims 3,
`4, 6, 8, and 9 of the ’734 patent would have been obvious.
`CONCLUSION
`We reverse the Board’s determination that claims 1, 2,
`5, 7, and 10–13 of the ’734 patent would have been obvious.
`We affirm the Board’s determination that Aligned Vision
`failed to prove claims 3, 4, 6, 8, and 9 would have been ob-
`vious.
`AFFIRMED IN PART AND REVERSED IN PART
`COSTS
`
`Costs awarded to Virtek.
`
`