A Reinforcement of KSR’s Impact on Patent Obviousness

By Jack Passero

On March 27, 2024, the Court of Appeals for the Federal Circuit decided Virtek Vision International Ulc v. Assembly Guidance Systems, Inc., Dba Aligned Vision. See 97 F.4th 882 (2024). Virtek had four patents that Aligned Vision sought to invalidate for unpatentability under the grounds of obviousness via inter partes review (IPR). The claimed invention involved the use of a three-dimensional laser technology to align a laser projecting system, describing a “two-part alignment method for aligning a laser projector [onto] a work surface using a secondary light source and a laser beam.” See Geetha Durairaj & Nathan D. Reeves, Being Known is Not Enough, Knobbe Martens Blog (Apr. 4, 2024). A link to the full opinion can be found here.

There were four grounds of obviousness raised by Aligned Vision, with Grounds 1 and 3 being upheld as obvious and unpatentable and Grounds 2 and 4 found to be not obvious and therefore patentable. The basis of obviousness for Grounds 1 and 3 relied solely on the availability of the information between multiple forms of prior art, but there was no testimony or evidence presented to showcase the need for the combination of prior art that resulted in the claimed invention.

Virtek appealed the judgment of the IPR and Aligned Vision cross-appealed. The issue brought to the Federal Circuit Court of Appeals was whether a skilled artisan would have been motivated to combine prior art references. The court viewed the case de novo (from new), giving no deference to the lower court's findings on matters of law, and instead applied the fact found in the lower court to their own legal analysis.

In their consideration of judgment on the matter, the court relied on KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). The Supreme Court in KSR International threw out the Teaching, Suggestion, Motivation (TSM) test for utility patents. The TSM test said an invention was only obvious if there was clear proof, like documents, showing someone would have been inspired to combine existing ideas to create it. This proof could come from prior inventions, the problem itself, or what someone skilled in that area would know.

The KSR International decision created a more flexible approach. Now, instead of needing those documents, other factors can be considered as motivation for combining ideas. These factors could include things like pressure from the market to create a new product or the fact that the invention itself was a commercial success.

Per the court in Virtek, “KSR provides an important understanding of the circumstances in which limitations from different references can be combined to conclude that a claimed invention would have been obvious.” The court emphasized that something more than the availability of information is required to warrant a claim of obviousness. With regard to the claimed invention, the existence of both one-camera angular direction and two-camera three-dimensional coordinate systems in the prior art doesn't demonstrate a reason for a skilled artisan to replace a single-camera approach with another two-camera method. There must exist a motivation to combine various prior art references in order for a skilled artisan to make the claimed invention.

The sole argument presented in this case rests on the mistaken assumption that mere disclosure of separate forms of prior art satisfies the legal standard for motivation to combine. Per the court in this matter, “[t]hat is an error as a matter of law.” At a minimum, some motivation to combine prior art is required for a claim of obviousness to be warranted under the standard presented in KSR International and reaffirmed in Virtek v. Aligned Vision.