Virtek Vision Int’l ULC v. Assembly Guidance Sys
Authored by: Jeremy J. Gustrowsky
A recent Federal Circuit decision highlights a key principle in patent law: just because two technical approaches are “known” doesn’t mean it’s obvious to combine them. The case involved U.S. Patent No. 10,052,734, which covers an improved method for aligning laser projectors used in manufacturing. The patent owner, Virtek Vision International ULC, challenged a Patent Trial and Appeal Board (PTAB) decision that had found several claims of its patent unpatentable as obvious in light of earlier inventions.
The dispute centered on whether it would have been obvious for someone skilled in the field to use a three-dimensional (3D) coordinate system, as described in one piece of prior art, instead of an angular direction system described in others. The PTAB had agreed with the challenger, Assembly Guidance Systems, Inc., that since both systems were known, it would have been obvious to substitute one for the other. However, the Federal Circuit disagreed, emphasizing that simply knowing about two options isn’t enough. There must be a specific reason or motivation for a skilled person to make the combination or substitution, such as a design need, market pressure, or a finite set of predictable solutions.
The court found that the challenger and its expert had not provided any real explanation or evidence as to why someone would make the switch from angular to 3D coordinates. The only argument was that both systems were “known,” which the court said was not sufficient. As a result, the Federal Circuit reversed the PTAB’s decision that claims 1, 2, 5, 7, and 10-13 of the patent were unpatentable. On the other hand, the court affirmed the PTAB’s decision that the challenger had not proven other claims (3, 4, 6, 8, and 9) were obvious, again due to a lack of evidence for motivation to combine.
This decision serves as a reminder that in patent law, obviousness requires more than just the existence of known elements in the prior art. There must be a clear rationale for combining them in the way the patent claims. Without that, a patent can withstand an obviousness challenge—even when all the building blocks are out there.