Background
Virtek Vision International ULC develops and sells laser projection and templating systems used in manufacturing environments — technology that precisely projects a laser image onto a work surface to guide assembly of complex parts such as aircraft panels, composite structures, or industrial products. Virtek holds U.S. Patent No. 10,052,734, which discloses an improved method for aligning a laser projector with respect to a work surface, using reference points to achieve high precision.
Assembly Guidance Systems, Inc. (AGS) challenged Virtek’s patent in inter partes review (IPR) proceedings before the PTAB, arguing that the asserted claims were obvious in light of combinations of prior art references. The PTAB agreed with AGS, finding that certain claims were unpatentable as obvious. The PTAB’s analysis focused on whether the prior art disclosed all elements of the claims, but AGS’s articulation of why a skilled artisan would have been motivated to combine the specific references as proposed was thin. Virtek appealed, arguing the PTAB’s motivation-to-combine analysis was legally deficient.
The Court’s Holding
The Federal Circuit reversed the PTAB’s obviousness finding as to the invalidated claims. The court held that the PTAB’s motivation-to-combine analysis rested on an impermissible foundation: the mere fact that a person of ordinary skill in the art (POSITA) had access to the relevant prior art references and possessed the technical capability to make the proposed combination. That is not enough. Obviousness requires evidence of why a skilled artisan would have been motivated to make the combination — not just that they could have done so if they had decided to try.
The court found that AGS had not provided any record evidence of a design need, market pressure, common sense rationale, or any other concrete reason that would have led a POSITA to combine the references in the manner claimed. The PTAB’s analysis amounted to hindsight reconstruction — looking at the patent and working backward to identify prior art that could be assembled into the claimed combination, without asking whether a skilled artisan would have had any reason to assemble them that way before seeing the invention. The Federal Circuit vacated and remanded the PTAB’s findings on those claims, and affirmed on the remaining claims where the obviousness analysis was adequately supported.
Key Takeaways
- Showing that prior art discloses all elements of a claim, and that a skilled artisan could have combined them, is not sufficient for obviousness — there must be evidence of a reason why the artisan would have made the combination.
- Motivation to combine cannot rest solely on the availability of prior art references; IPR petitioners must point to concrete evidence: design needs, market pressures, prior art teachings suggesting the combination, or common sense rationales supported by the record.
- The Federal Circuit will reverse PTAB obviousness findings that rest on hindsight reasoning — identifying the path from prior art to the claimed invention only after seeing the invention itself.
- KSR’s more flexible approach to obviousness does not eliminate the need for a reasoned motivation to combine; it simply expands the types of evidence that can supply that motivation beyond explicit prior art teachings.
Why It Matters
Motivation to combine is one of the most frequently contested issues in IPR proceedings, and this decision reinforces that the PTAB cannot rely on thin or conclusory motivation analyses to sustain an obviousness finding. For patent owners defending against IPR challenges, the ruling confirms that demanding rigorous motivation evidence — not just a listing of references that collectively contain the claimed elements — is a legitimate and important line of defense.
For petitioners filing IPR challenges, the case is a reminder to invest time in building a specific, evidence-based motivation argument: Why would a POSITA have tried this combination? What problem were they trying to solve? What in the prior art pointed toward this particular synthesis? These are the questions the PTAB must answer, and the Federal Circuit will review those answers carefully. As IPR practice matures, the quality and specificity of motivation-to-combine arguments continues to be a decisive factor in whether PTAB invalidity findings survive appeal.