"Known" Claim Elements Alone Insufficient For Motivation To Combine

In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board ("PTAB") decision in holding that certain claims of the Virtek patent (U.S. Patent No. 10,052,734) were unpatentable as obvious. See Virtek Vision Int'l ULC v. Assembly Guidance Sys., Inc, No. 2022-1998 (Fed. Cir. Mar. 27, 2024). On cross-appeal, the court also sided with Virtek, affirming that the challenger failed to prove the remaining claims unpatentable as obvious. The "motivation to combine" doctrine was at issue in both the appeal and the cross-appeal.

The '734 patent involves an improved method for aligning a laser projector with respect to a work surface. Assembly Guidance Systems, Inc. d/b/a Aligned Vision ("Aligned Vision") petitioned for inter partes review arguing that all claims of the '734 patent were unpatentable under 35 USC § 103. Specifically, Align Vision asserted two different combinations of prior art (Grounds 1 and 3), and contended that a first group of