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 represented by GREGORY D. DEGRAZIA, ANITA CARLA MARINELLI, 

Detroit, MI. 

 WILLIAM ERIC HILTON, Gesmer Updegrove LLP, Boston, MA, argued for cross-appellant. Also represented by 

TODD A. GERETY. 

 ______________________ 

Case: 22-1998 Document: 48 Page: 1 Filed: 03/27/2024
VIRTEK VISION INTERNATIONAL ULC v.

ASSEMBLY GUIDANCE SYSTEMS, INC. 

2

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 

U.S. Patent No. 10,052,734 are unpatentable. Assembly 

Guidance Systems, Inc. d/b/a Aligned Vision (Aligned Vision) 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 improved 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 direct manufacturing processes. Id. at 1:23–28. To accurately 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.” 

Id. 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, measuring 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.” 

Id. at 1:38–52. This scanning process is periodically 

stopped “to check for variation in the projected pattern location due to a change in the position of the projector relative to the tool.” Id. 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.” Id.

at 1:49–57. 

In light of these deficiencies, the ’734 patent discloses 

an improved two-part alignment method. Id. at 1:66–2:29. 

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In the first step, a secondary (i.e., non-laser) light source 

flashes a light onto the work surface to determine the pattern of targets on the work surface. Id. 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 precise location of the targets to direct the laser projector

where to project the laser template image. Id. 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 projecting a laser image onto a work surface, comprising 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 sensor for sensing a laser beam;

affixing reflective targets onto the work 

surface;

transmitting light from the secondary light 

source toward the work surface and reflecting light toward the photogrammetry device 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 dimensional 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 reflecting the laser beam toward the laser sensor 

and calculating a precise location of the 

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targets from the reflected laser beam for directing the laser projector where to project 

the laser image onto the work surface. 

Id. 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 unpatentability. 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 decision holding claims 1, 2, 5, 7, and 10–13 unpatentable and 

claims 3, 4, 6, 8, and 9 not unpatentable. Assembly Guidance Sys., Inc. v. Virtek Vision Int’l ULC, No. IPR2021-

00062, 2022 WL 1463734 (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 unpatentability based on Grounds 2 and 4. Id. at *7–24. Virtek appeals 

and Aligned Vision cross-appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

Obviousness is a question of law based on underlying 

facts. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1326 (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., 848 F.3d 987, 991 (Fed. Cir. 2017). Whether a skilled 

artisan would have been motivated to combine prior art references is a question of fact. Ariosa Diagnostics v. Verinata 

Health, Inc., 805 F.3d 1359, 1364 (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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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 evidence. We agree.

Claim 1 recites “identifying a pattern of the reflective 

targets on the work surface in a three dimensional coordinate 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 coordinate system disclosed in Briggs instead of the angular direction systems in Keitler or Bridges. Decision, 2022 WL 

1463734, at *9, *18–19. The Board reasoned this combination would have been obvious to try because Briggs discloses both 3D coordinates and angular directions. Id.

We conclude that the Board erred as a matter of law 

with regard to the motivation to combine. It does not suffice to meet the motivation to combine requirement to recognize 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 different embodiments of laser tracker systems—one that 

uses two cameras to determine the 3D coordinates of a target, J.A. 757 ¶ 49, and another that uses one camera to determine 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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754 ¶ 42. These disclosures, however, do not provide any 

reason why a skilled artisan would use 3D coordinates instead of angular directions in a system. See Belden Inc. v. 

Berk-Tek LLC, 805 F.3d 1064, 1073 (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 artisan would have substituted the one-camera angular direction 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 different 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 motivation 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, 

2022 WL 1463734, at *9 (citing J.A. 194–96); id. at *19 (citing J.A. 210, 215–16). There is no dispute the petition relied upon Dr. Mohazzab’s declaration. J.A. 194–96, 210, 

215–16; Oral Arg. at 4:12–20.

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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. id. 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 circumstances in which limitations from different references 

can be combined to conclude that a claimed invention 

would have been obvious. In KSR, the Supreme Court explained, “[w]hen there is a design need or market pressure 

to solve a problem and there are a finite number of identified, 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., 550 U.S. 

398, 421 (2007). “If this leads to the anticipated success, it 

is likely the product not of innovation but of ordinary skill 

and common sense.” Id. 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 assertions in Dr. Mohazzab’s declaration do not provide substantial evidence for finding a motivation to combine. 

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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 identified, predictable solutions. There is no evidence of a design 

need or market pressure. In short, this case involves nothing 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 evidence 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., Mohazzab 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 deposition, a petitioner may not, in its reply and accompanying 

expert declaration, rely “on an entirely new rationale to explain why one of skill in the art would have been motivated 

to combine.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). The 

same restriction must apply to expert depositions that take 

place after the service of the reply and declaration. Moreover, neither party has argued the Board’s motivation to

combine findings are supported by Dr. Mohazzab’s deposition testimony. 

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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 Keitler, 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 limitations in the dependent claims. See, e.g., J.A. 205–06 (pointing 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, 2022 WL 

1463734, at *17–18. 

Aligned Vision argues the Board’s finding of no motivation to combine is not supported by substantial evidence. 

According to Aligned Vision, because the additional elements 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 common 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, 550 U.S. at 

418 (“[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 respect to Grounds 2 and 4. For simplicity, we address 

Ground 2 as representative.

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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 support 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 sensor 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 motivated to combine the camera disclosed in ’094 Rueb with 

Keitler and Briggs. Aligned Vision similarly failed to present 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 obvious. 

AFFIRMED IN PART AND REVERSED IN PART

COSTS

Costs awarded to Virtek.

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