Known Claim Elements Alone Insufficient for Mot

“Known” Claim Elements Alone Insufficient for Motivation to Combine, PTAB Litigation Blog

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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.

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