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
 

 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. 

 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.”
 

 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.”
 

 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.” 

 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.” 

 at 1:49–57.
     In light of these deficiencies, the ’734 patent discloses
 an improved two-part alignment method. 

 at 1:66–2:29.
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 VIRTEK VISION INTERNATIONAL ULC v.                          3
 ASSEMBLY GUIDANCE SYSTEMS, INC.


 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. 

 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. 

 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
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 4                          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.
 

 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, 

 (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. 

 at *7–24. Virtek appeals
 and Aligned Vision cross-appeals. We have jurisdiction un-
 der 

(a)(4)(A).
                           DISCUSSION
     Obviousness is a question of law based on underlying
 facts. WBIP, LLC v. Kohler Co., 

 (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., 

 (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., 

 (Fed. Cir. 2015).
                I.      GROUNDS 1 AND 3
     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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 VIRTEK VISION INTERNATIONAL ULC v.                        5
 ASSEMBLY GUIDANCE SYSTEMS, INC.


 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, 

, 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. 

      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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 6                        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, 

 (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,
 

, at *9 (citing J.A. 194–96); 

 (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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 VIRTEK VISION INTERNATIONAL ULC v.                          7
 ASSEMBLY GUIDANCE SYSTEMS, INC.


 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. 

 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., 

 (2007). “If this leads to the anticipated success, it
 is likely the product not of innovation but of ordinary skill
 and common sense.” 

 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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 8                        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., 

, 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.
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 VIRTEK VISION INTERNATIONAL ULC v.                         9
 ASSEMBLY GUIDANCE SYSTEMS, INC.


                   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, 

, 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, 

 (“[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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 10                       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.