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Federal Circuit Finds Challenged Claims of Laser Projector Alignment Patent Not Unpatentable
03/27/2024On March 27, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion (i) reversing the Patent Trial and Appeal Board’s (“Board”) finding that certain challenged claims of a patent directed to a method for aligning a laser projector with respect to a work surface are unpatentable and (ii) affirming the Board’s finding that certain other challenged claims of the patent are not unpatentable. Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc., __ F.4th __ (Fed. Cir. Mar. 27, 2024).
Virtek Vision International ULC (“Virtek”) owns U.S. Patent No. 10,052,734, which discloses an improvement for methods of aligning laser projectors with respect to a work surface. The ’734 patent explains that lasers can be used to project a template image onto a work surface in order to direct a manufacturing process, but that there must be precise calibration of the relative position between the work surface and the laser projector in order to ensure accuracy of the template projection.
In prior art methods, the alignment would occur by locating reflective targets on the work surface, measuring 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. These prior art methods were slow and inefficient because they required periodic pauses in order to check for variation in the projected pattern location due to a change in the position of the projector relative to the tool. If any variation was detected, the targets would have to be relocated and the projector would have to be realigned.
The ’734 patent discloses an improved method that involves two steps. In step one, a secondary light source flashes a light onto the work surface to determine the pattern of targets on the surface. In step two, a laser beam scans the targets as directed by the identified pattern and calculates the precise location of the targets to direct the laser projector where to project the laser template image.
Aligned Vision International ULC (“Aligned Vision”) petitioned for inter partes review of the ’734 patent on four different grounds: Grounds 1 and 3 are obviousness of claims 1, 2, 5, 7, and 10–13 over (1) Keitler and Briggs and (3) Briggs and Bridges; Grounds 2 and 4 are obviousness of claims 3–6 and 8–12 over (2) Keitler, Briggs, and ’094 Rueb and (4) Briggs, Bridges, and ’094 Rueb. In its final written decision, the Board held that Aligned Vision had proven unpatentability based on Grounds 1 and 3 but failed to prove unpatentability based on Grounds 2 and 4. Virtek appealed the unpatentability finding with respect to Grounds 1 and 3, and Aligned Vision cross-appealed the Board’s finding with respect to Grounds 2 and 4.
Virtek argued in its appeal that the Board erred in finding that there was a motivation to combine Briggs with either Keitler or Bridges. Claim 1 requires “identifying a pattern of the reflective targets on the work surface in a three dimensional coordinate system.” Neither Keitler nor Bridges discloses a 3D-coordinate system. Rather, each reference discloses determining an angular direction of each target. Because Briggs discloses determining the 3D coordinates of targets as one of two potential embodiments (the other being angular directions), Aligned Vision relied on Briggs to supply this claim limitation. With respect to motivation to combine, the Board reasoned that the combination of either Keitler or Bridges with Briggs would have been obvious to try because Briggs discloses both 3D coordinates and angular directions.
The CAFC concluded that the Board erred as a matter of law and explained that it is not sufficient to meet the motivation to combine requirement to simply put forth evidence that two alternative arrangements, such as an angular-direction system using a singlecamera and a 3D-coordinate system using two cameras, were both known in the art. Rather, in accordance with KSR Int’l v. Teleflex Inc., the proponent of obviousness must put forth a reason why references should be combined, such as why one of skill would use 3D coordinates instead of angular directions. With respect to these references, Keitler and Bridges disclose angular-direction systems using a single camera, while Briggs discloses two alternative systems, including a 3D-coordinate system using two cameras. But Aligned Vision never set forth a reason to swap the single-camera angular-direction systems of Keitler and Bridges for the two-camera 3D-coordinate system of Briggs.
The CAFC further noted that Aligned Vision’s expert admitted that he did not provide in his declaration any reason to combine the references. And, while the expert attempted to present an argument during his deposition that it would have been “common sense” to use Briggs’ 3D-coordinate system, doing so was improper because, just as a petitioner may not, in its reply and accompanying expert declaration, rely on an entirely new rationale to explain why one of skill in the art would have been motivated to combine, it may not do so in an expert deposition that takes place after service of the reply and declaration.
Thus, the CAFC sided with Virtek and reversed the Board’s determination that claims 1, 2, 5, 7, and 10–13 of the ’734 patent would have been obvious.
Aligned Vision argued in its cross-appeal with respect to Grounds 2 and 4 that the Board erred in finding that Aligned Vision failed to show a motivation to combine ’094 Rueb with the remaining references. Aligned Vision reasoned that, because the additional elements 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.” However, similar to Virtek’s appeal, Aligned Vision neither argued before the Board that it would have been common sense to combine the references as claimed nor offered any evidence regarding a common-sense motivation. The only evidence Aligned Vision did present was expert testimony that ’094 Rueb discloses a camera with a multi-megapixel sensor and a skilled artisan would have known to use a camera with a multi-megapixel sensor in mid-2016. The CAFC found this testimony to be conclusory and explained that it fails to address why or whether a skilled artisan would have been motivated to combine the camera disclosed in ’094 Rueb with Keitler and Briggs.
Thus, the CAFC again sided with Virtek and affirmed the Board’s determination that Aligned Vision failed to prove claims 3, 4, 6, 8, and 9 would have been obvious.
