Patents

Virtek Vision v. Assembly Guidance: A Reason to Combine, Not Just the Parts

The Federal Circuit reversed a PTAB obviousness finding because the petitioner showed the prior art's pieces existed but never explained why a skilled artisan would assemble them that way.

March 26, 2026
A laser projector casting alignment lines across an industrial work surface
The patent concerned a two-part method for aligning a laser projector to a work surface. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

Virtek Vision International ULC v. Assembly Guidance Systems, Inc. (d/b/a Aligned Vision), No. 2022-1998, 97 F.4th 882 (Fed. Cir. Mar. 27, 2024), is a crisp reminder that obviousness under 35 U.S.C. § 103 is not a parts list. In an opinion by Chief Judge Moore, joined by Judges Hughes and Stark, the Federal Circuit reversed a Patent Trial and Appeal Board determination that several claims of U.S. Patent No. 10,052,734 were unpatentable as obvious. The reason was elemental and, for that reason, important: the petitioner had shown that every claimed feature appeared somewhere in the prior art, but it had never articulated why a skilled artisan would have combined those features in the way the claims required. The court also affirmed the Board’s separate refusal to invalidate the patent’s dependent claims, sending the IPR petitioner home empty-handed on both its appeal and its cross-appeal.

At a glance

  • Case: Virtek Vision Int’l ULC v. Assembly Guidance Sys., Inc., No. 2022-1998 (Fed. Cir. Mar. 27, 2024).
  • Patent: U.S. Patent No. 10,052,734, directed to an improved two-part method of aligning a laser projector to a work surface using a secondary light source and a laser beam.
  • Posture: Appeal and cross-appeal from a final written decision in inter partes review.
  • Holding: The Board’s finding that claims 1, 2, 5, 7, and 10–13 were obvious was not supported by substantial evidence, because the petitioner offered no reason a skilled artisan would have swapped one localization system for another. Reversed.
  • Cross-appeal: The Board’s determination that the remaining claims were not shown unpatentable was affirmed.
  • Doctrinal core: KSR did not eliminate the requirement of a motivation to combine; the mere existence of two known alternatives is not, by itself, a reason to pick one.

The Graham framework, restated

Every § 103 analysis begins with the four Graham v. John Deere Co. inquiries: the scope and content of the prior art, the differences between the prior art and the claims, the level of ordinary skill in the art, and any objective indicia of nonobviousness. Virtek is a case about the second and, implicitly, the first of those factors. The disputed element was how the system determines where a point sits in space. Two of the asserted references, Keitler and Bridges, disclosed single-camera systems that locate a target by its angular direction. A third reference, Briggs, disclosed a two-camera system that locates a target by its three-dimensional coordinates. The claims recited the 3D-coordinate approach.

So the prior art contained both flavors of localization. The “difference” the Board had to bridge was the substitution of Briggs’s two-camera 3D-coordinate system for the single-camera angular-direction systems of Keitler and Bridges. The petitioner, Aligned Vision, had built its case on four grounds: it argued claims 1, 2, 5, 7, and 10–13 were obvious over Keitler and Briggs (Ground 1) and over Briggs and Bridges (Ground 3), and that dependent claims 3–6 and 8–12 were obvious over those combinations further in view of a Rueb reference (Grounds 2 and 4). The Board accepted Grounds 1 and 3 and rejected Grounds 2 and 4. Both sides appealed the half they lost.

KSR’s flexibility and its outer limit

KSR International Co. v. Teleflex Inc. is frequently invoked as the case that loosened the obviousness inquiry. It rejected a rigid teaching-suggestion-motivation test, endorsed common sense, and recognized that combining familiar elements according to known methods is likely obvious when it yields no more than predictable results. Petitioners often read KSR as license to assemble references on the strength of “a person of ordinary skill would have known how.”

Virtek draws the line that KSR itself drew. The court held, in language it would be wise for any IPR petitioner to memorize, that 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.” Flexibility goes to the form of the reasoning a tribunal will accept — it can come from market forces, design needs, common sense, or the nature of the problem — not to whether reasoning is required at all. KSR expanded the toolbox of admissible rationales; it did not authorize their absence.

The Board’s error was to treat the existence of two known coordinate systems as the answer to the motivation question. The fact that both angular-direction and 3D-coordinate localization were known in the art establishes that a skilled artisan could have used either. It does not establish that a skilled artisan would have chosen to replace the angular system disclosed in Keitler or Bridges with the 3D system disclosed in Briggs to build the claimed invention. That gap — between capability and motivation — is precisely where the Board’s findings ran out of evidentiary support.

The motivation gap

What makes Virtek such a clean teaching vehicle is how little there was to motivate the swap on the record. The court found no record evidence of a design need that pushed toward the 3D system, no market pressure favoring the substitution, and no common-sense rationale that a skilled artisan would have brought to bear. Most damning, Aligned Vision’s own expert admitted that his declaration did not actually supply a reason to combine the references. An expert who concedes he never offered the motivation cannot supply the substantial evidence the Board needs.

The Board had also leaned on an “obvious to try” theory, suggesting that substituting one known coordinate system for another was simply choosing among known options. KSR does recognize obvious-to-try as a path to obviousness — but only where there is a design need or market pressure, a finite number of identified, predictable solutions, and a reasonable expectation of success. The court found that scaffolding missing. There was no evidence that the field had been narrowed to a small set of predictable solutions such that trying the 3D system was the natural next step. Without that, “known alternative” collapses back into impermissible hindsight: the claimed combination looks inevitable only because the patent already taught it.

The cross-appeal: a clean sweep against the challenger

Aligned Vision cross-appealed the Board’s refusal to find the dependent claims unpatentable on Grounds 2 and 4, which added the Rueb reference. The Federal Circuit affirmed. Substantial-evidence review cuts both ways, and where the Board reasonably concluded the petitioner had not carried its burden, that finding stands. The net result is unusual and instructive: the petitioner lost the claims it had won at the Board and failed to gain the claims it had lost there. The patent emerged from inter partes review intact. For challengers, Virtek is a cautionary tale about petitions that catalog elements without ever building the bridge between them.

Open questions

  • How much motivation is enough? The court did not hold that elaborate expert economics is required. A single articulated, evidence-backed reason can suffice. The open question is how much a petitioner must say before “known alternative” ripens into a real rationale — and how Board panels will calibrate that line in mechanical-substitution cases.
  • Does this reach beyond predictable arts? Virtek involved a tangible substitution of localization hardware. Whether the same insistence on articulated motivation carries the same force in unpredictable arts, where reasonable-expectation-of-success doctrine already does heavy lifting, remains to be tested.
  • What about objective indicia? Because the case turned on motivation to combine, the court did not reach secondary considerations. Virtek leaves untouched the parallel line of authority requiring the Board to weigh copying, commercial success, and long-felt need before reaching an obviousness conclusion.

Implications

  • For IPR petitioners: Map every element to the art and state, with evidentiary support, why a skilled artisan would assemble them as claimed. A petition that proves the parts exist but never explains the combination is vulnerable on substantial-evidence review.
  • For expert witnesses: The motivation to combine must live in the declaration, not in argument. An expert’s concession that he never supplied a reason can be dispositive.
  • For patent owners: Press the petitioner to identify a concrete rationale — design need, market pressure, finite predictable options — and exploit the gap when none is articulated.
  • For the PTAB: “Both options were known” is a finding about capability, not motivation. Final written decisions should articulate the why of a combination, not merely catalog the what.
  • For litigators generally: Virtek is a portable quotation. The line that KSR “did not do away with” the motivation requirement is useful wherever an opponent reaches for KSR as a shortcut around reasoned analysis.

Frequently asked questions

Did Virtek narrow KSR? No. It applied KSR faithfully. KSR broadened the kinds of reasons a tribunal may credit for combining references; it never excused the need for a reason. Virtek simply enforces that distinction against a record with no articulated motivation.

Why did the patent owner win the cross-appeal too? The petitioner also challenged dependent claims under grounds that added the Rueb reference. The Board found those grounds unproven, and the Federal Circuit held that conclusion was supported by substantial evidence. Both the appeal and the cross-appeal failed, leaving the challenged claims patentable.

What is the single most useful takeaway? The existence of known alternatives is not a motivation to combine. Showing that a skilled artisan could have made the substitution is not the same as showing she would have, and only the latter supports an obviousness finding.

Authorities and sources