Being Known Is Not Enough

| Geetha Durairaj, Ph.D.Nathan D. Reeves


Before Moore, Hughes, and Stark.  Appeal from the Patent Trial and Appeal Board (“Board”).

Summary: Merely showing that prior art elements were known to a person skilled in the art without providing a reason to combine the references does not prove obviousness.

Assembly Guidance Systems, Inc. d/b/a Aligned Vision (“Aligned Vision”) petitioned for an inter partes review of a patent owned by Virtek Vision International ULC (“Virtek”). The patent described a two-part alignment method for aligning a laser projector on to a work surface using a secondary light source and a laser beam. Aligned Vision asserted four grounds of unpatentability over various combinations of four prior art references. The Board issued a final written decision invalidating some challenged claims of the patent on two grounds of unpatentability. However, the Board found that Aligned Vision failed to prove unpatentability of other challenged claims based on two other grounds. Virtek appealed the the Board’s invalidation of some challenged claims, while Aligned Vision cross-appealed the Board’s holding that Aligned Vision failed to prove unpatentability of the remaining challenged claims.

The Federal Circuit reversed the Board’s decision as to the invalidated claims and affirmed as to the remaining claims.  In both cases, the Federal Circuit emphasized that a showing of obviousness requires substantial evidence of why a skilled artisan would have been motivated to combine the references to arrive at the claimed invention, and noted that it is not sufficient merely to show that the skilled artisan had the knowledge required to make the combination if desired. The Federal Circuit found no record evidence that a design need, market pressure, or any common-sense reason would have motivated a skilled artisan to combine the references. Thus, the Federal Circuit applied the well-established principle that the mere existence of the claim elements in the prior art is not substantial evidence of a motivation to combine.

Editor: Sean Murray