DCT
1:20-cv-10857
Virtek Vision Intl Inc v. Assembly Guidance Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Virtek Vision International ULC (Canada)
- Defendant: Assembly Guidance Systems, Inc. dba Aligned Vision (Massachusetts)
- Plaintiff’s Counsel: Wilmer Cutler Pickering Hale and Dorr LLP
- Case Identification: 1:20-cv-10857, D. Mass., 05/05/2020
- Venue Allegations: Venue is alleged to be proper as the Defendant maintains a regular and established place of business in Massachusetts and has committed the alleged acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s TARGETGUIDE product, a system for industrial manufacturing, infringes a patent related to an improved method for laser projection and alignment.
- Technical Context: The technology involves laser projection systems that display templates on 3D workpieces to guide the precise placement of components in industries such as aerospace and manufacturing.
- Key Procedural History: The complaint alleges that Plaintiff disclosed the patented technology to Defendant in early 2017 under a non-disclosure agreement during partnership discussions. Plaintiff further alleges that Defendant used this confidential information to develop the accused product, was notified of the issued patent via a cease-and-desist letter in July 2019, and falsely represented that it had removed the product from the market before covertly re-launching it. After the complaint was filed, an Inter Partes Review (IPR) proceeding (IPR2021-00062) was initiated against the patent-in-suit. An IPR certificate issued on September 30, 2024, confirmed that all claims (1-13) were found patentable, which may significantly influence questions of patent validity in this litigation.
Case Timeline
| Date | Event |
|---|---|
| 2016-10-17 | Priority Date for ’734 Patent (Provisional App. 62/408,944 filed) |
| Early 2017 | Plaintiff allegedly discloses technology to Defendant under NDA |
| 2018-08-21 | U.S. Patent No. 10,052,734 Issues |
| June 2019 | Defendant begins advertising accused TARGETGUIDE product |
| 2019-07-02 | Plaintiff sends cease-and-desist letter to Defendant |
| 2020-04-21 | Plaintiff discovers Defendant has re-listed TARGETGUIDE for sale |
| 2020-05-05 | Complaint for Patent Infringement Filed |
| 2020-10-14 | IPR2021-00062 filed against the ’734 Patent |
| 2024-09-30 | IPR Certificate issues, confirming patentability of all claims 1-13 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,052,734 - A Laser Projector with Flash Alignment
The Invention Explained
- Problem Addressed: The patent addresses the inefficiency of aligning laser projection systems with three-dimensional workpieces in a manufacturing environment. Conventional methods required the laser itself to perform a slow, comprehensive scan of the work area to locate reflective alignment targets, a process that had to be repeated if the workpiece or projector moved, causing significant production delays (’734 Patent, col. 1:30-54).
- The Patented Solution: The invention proposes a more efficient, two-stage alignment method. First, a secondary, non-laser light source (e.g., a flash) illuminates the workpiece, and a photogrammetry device (e.g., a camera) captures an image to quickly identify the reflective targets and determine their general location. This information is then used to direct the laser projector to perform a rapid, targeted scan of only the targets themselves to calculate their precise location, which is then used to project the manufacturing template. This "flash-then-scan" approach avoids the time-consuming need for the laser to search the entire workspace for the targets (’734 Patent, col. 2:16-30; col. 4:14-43).
- Technical Importance: This method significantly reduces the time required to achieve and maintain precise alignment, thereby improving the quality and speed of manufacturing processes that rely on laser-projected templates (’734 Patent, col. 2:20-30).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (’734 Patent, col. 6:33-5; Compl. ¶42).
- The essential elements of independent Claim 1, a method claim, include:
- Providing a system including a laser projector, a secondary light source, a photogrammetry device, and a laser sensor.
- Affixing reflective targets onto a work surface.
- Transmitting light from the secondary light source toward the work surface.
- Using the photogrammetry device to identify a pattern of the reflective targets from the reflected secondary light.
- After identifying the pattern, scanning the targets with a laser beam "as directed by the identified pattern."
- Reflecting the laser beam from the targets toward the laser sensor.
- Calculating a precise location of the targets from the reflected laser beam to direct the laser projector.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Defendant's "TARGETGUIDE" system, which is used as part of a "TARGETGUIDE Assembly" for laser projection in manufacturing (Compl. ¶¶1, 27). No probative visual evidence provided in complaint.
Functionality and Market Context
The complaint alleges that the TARGETGUIDE system performs a method for aligning a laser projector that mirrors the patented invention. It allegedly uses a secondary, non-laser light source to illuminate reflective targets on a work surface (Compl. ¶28). From the reflected light, it is alleged to identify a pattern of the targets to determine their general location (Compl. ¶29). This general location is then allegedly used to direct a laser beam to scan the targets for a precise location, which in turn is used to project a laser image onto the work surface (Compl. ¶¶30-32). Plaintiff asserts that it and Defendant are competitors in the laser projection industry (Compl. ¶36).
IV. Analysis of Infringement Allegations
’734 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for aligning a laser projector... comprising the steps of: providing a laser projector assembly with a laser source..., a secondary light source..., a photogrammetry device..., and a laser sensor | When demonstrating its TARGETGUIDE system, Aligned Vision provides a laser projector assembly with a laser source, a secondary light source, a photogrammetry device, and a laser sensor (Compl. ¶¶44-47). | ¶44-47 | col. 6:36-43 |
| affixing reflective targets onto the work surface; | Aligned Vision affixes reflective targets onto a work surface (Compl. ¶48). | ¶48 | col. 6:44 |
| transmitting light from the secondary light source toward the work surface and reflecting light toward the photogrammetry device from the reflective targets | A secondary light source transmits light toward a work surface with reflective targets, and the targets reflect the light toward a photogrammetry device (Compl. ¶49). | ¶49 | col. 6:45-47 |
| thereby identifying a pattern of the reflective targets on the work surface in a three dimensional coordinate system; | A photogrammetry device identifies a pattern of reflective targets on the work surface in a three-dimensional coordinate system using light reflected by the targets from the secondary light source (Compl. ¶50). | ¶50 | col. 6:47-50 |
| and after identifying the pattern... scanning the targets with a laser beam generated by the laser source as directed by the identified pattern of the reflective targets | After identifying a pattern of reflective targets, the reflective targets are then scanned with a laser beam generated by a laser source as directed by the identified pattern (Compl. ¶51). | ¶51 | col. 6:50-54 |
| for reflecting the laser beam toward the laser sensor and calculating a precise location of the targets from the reflected laser beam | The scanned targets reflect the laser beam towards the laser sensor, which then calculates a precise location of the targets from the reflected laser beam (Compl. ¶52). | ¶52 | col. 7:1-2 |
| for directing the laser projector where to project the laser image onto the work surface. | The calculated precise location of the targets is used to direct the laser projector where to project a laser image onto the work surface (Compl. ¶53). | ¶53 | col. 7:3-5 |
Identified Points of Contention
- Technical Questions: The infringement allegations rely heavily on "information and belief." A central question for discovery will be whether the TARGETGUIDE system technically operates as alleged. Specifically, what evidence demonstrates that the system's photogrammetry device is used to "identify a pattern" for the express purpose of "directing" a subsequent, targeted laser scan, as required by the claim's logic? The defense may argue its system uses a different method to locate targets that does not map onto this two-step process.
- Scope Questions: The dispute may turn on the interpretation of "as directed by the identified pattern." Does this require the photogrammetry-derived location to provide precise coordinates for the laser scan, or can it be read more broadly to mean simply narrowing the laser's search area? The specific implementation described in the patent suggests a more precise, coordinate-based direction (’734 Patent, col. 4:32-43).
V. Key Claim Terms for Construction
"identifying a pattern of the reflective targets"
- Context and Importance: This term is critical because it defines the function of the initial, non-laser imaging step. The case may hinge on whether the accused system's use of a camera constitutes "identifying a pattern" in the manner claimed, or if it performs a more generic imaging function. Practitioners may focus on this term because it is the foundational step that enables the invention's efficiency gain.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide a rigid definition of "pattern," suggesting that any system capable of recognizing the locations of multiple targets relative to one another could be argued to meet this limitation.
- Evidence for a Narrower Interpretation: The specification describes using the "target 58 configuration" to determine the workpiece's 3D configuration and location, and using the "target 58 coordinates" to direct the laser scan (’734 Patent, col. 4:24-39). This could support a narrower construction requiring the identification of specific coordinates for multiple targets in a defined arrangement.
"as directed by the identified pattern"
- Context and Importance: This phrase establishes the causal link between the initial photogrammetry step and the subsequent laser-scanning step. Infringement requires proof that the first step’s output controls the second. The nature of this "direction" will be a key point of dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "directed by" is met if the pattern information is used in any way to guide the laser, such as by defining a general search area that is smaller than the entire workspace.
- Evidence for a Narrower Interpretation: The specification states that based on the target coordinates from the secondary light, "the galvo motors 30, 32 orient the laser beam 14 generated by the laser source 12 to directly scan the targets 58" (’734 Patent, col. 4:36-39). This language suggests a precise, targeted action, supporting a construction that requires the laser to be sent to specific locations derived from the pattern, not just a general vicinity.
VI. Other Allegations
Indirect Infringement
The complaint alleges both contributory and induced infringement. Inducement is based on Defendant allegedly providing customers with instructions, documentation, marketing, and training that encourage use of the TARGETGUIDE system in an infringing manner (Compl. ¶¶71-72). Contributory infringement is based on allegations that the TARGETGUIDE system is especially made for this infringing use and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶63).
Willful Infringement
The complaint makes detailed allegations to support willfulness. It asserts Defendant had pre-suit knowledge of the technology via confidential disclosures in 2017 while the patent was pending (Compl. ¶56). It further alleges post-issue knowledge from a July 2, 2019 cease-and-desist letter, followed by Defendant's allegedly deceptive conduct of removing the product from its website while continuing to sell it (Compl. ¶¶55-56).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of evidentiary proof: Can the Plaintiff demonstrate through discovery that the accused TARGETGUIDE system technically performs the specific two-stage "identify-then-direct" method required by Claim 1? The case's outcome will likely depend less on claim construction and more on a factual comparison of the accused product's actual operation against the claim's functional steps.
- A second key question will address willfulness and damages: Given the detailed allegations of prior confidential disclosure, alleged copying, and deceptive market conduct, a central focus of the litigation will be whether the defendant’s actions constitute willful infringement, which could expose it to enhanced damages under 35 U.S.C. § 284.
- Finally, a significant procedural factor will be the impact of the IPR confirmation: With all asserted claims having survived an IPR challenge, the Defendant's ability to argue for invalidity in district court is considerably weakened. A key question is how this post-filing development will shape litigation strategy, potentially shifting the case's focus almost entirely to the questions of infringement and willfulness.