Appliance Computing III, Inc.

Patent Trials and Appeals Board

Nov 19, 2021

IPR2021-00938 (P.T.A.B. Nov. 19, 2021)

Trials@uspto.gov Paper 16
571-272-7822 Entered: November 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MATTERPORT, INC.,
Petitioner,

v.

APPLIANCE COMPUTING III, INC.,
Patent Owner.

IPR2021-00938
Patent 10,592,973 B2

Before JAMESON LEE, MEREDITH C. PETRAVICK, and BARBARA A.
PARVIS, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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Patent 10,592,973 B2
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I. INTRODUCTION
A. Background and Summary
On May 14, 2021, Matterport, Inc. (“Petitioner”) filed a corrected
petition (Paper 3, “Petition”) requesting inter partes review of claims 1–23
(“challenged claims”) of U.S. Patent 10,592,973 B2 (Ex. 1001, “the ’973
patent”). Appliance Computing III, Inc. (“Patent Owner”) filed a
Preliminary Response. Paper 10 (“Prelim. Resp.”). Petitioner filed an
authorized Reply. Paper 14 (“Reply”). Patent Owner filed an authorized
Sur-Reply. Paper 15 (“Sur-Reply”).
We have authority to determine whether to institute review under 35
U.S.C. § 314 and 37 C.F.R. § 42.4. The standard for instituting an inter
partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter
partes review may not be instituted “unless the Director determines . . . there
is a reasonable likelihood that the petitioner would prevail with respect to at
least 1 of the claims challenged in the petition.”
Upon consideration of the parties’ contentions and the evidence of
record, we conclude Petitioner has not established a reasonable likelihood of
prevailing in demonstrating the unpatentability of any challenged claim of
the ’973 patent. Accordingly, we do not institute an inter partes review.
B. Real Parties-in-Interest
Petitioner identifies itself and Redfin Corporation as real parties-in-
interest. Pet. 2. Patent Owner identifies itself as a real party-in-interest.
Paper 5, 2.
C. Related Matters
Petitioner and Patent Owner both identify Appliance Computing III,
Inc. d/b/a Surefield v. Redfin Corporation, No. 6:20-cv-00376 (W.D. Tex.)
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Patent 10,592,973 B2
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(“parallel district court proceeding”) as litigation involving the ’973 patent.
Pet. 3; Paper 5, 2.
Petitioner has also filed three petitions for inter partes review of
related patents — U.S. Patent No. 9,836,885 (IPR2021-00936), U.S. Patent
No. 10,510,111, (IPR2021-00937), and U.S. Patent No. 10,102,673 B2
(IPR2021-00939). Pet. 3; Paper 5, 2.
D. The ’973 patent
The ’973 patent relates to three dimensional (3D) image-based
rendering (IBR) for real estate. Ex. 1001, code (57). Figure 5 of the ’973
patent is reproduced below.

Figure 5, above, illustrates flowchart for computer-implemented,
image-based rendering 100 for providing a 3D virtual model of real
property. Id. at 8:47–50.
The flowchart shown in Figure 5 begins with step 502 in which the
system generates the spatial boundaries in a model of the property that
define any one or more of the following: (1) the land, such as a parcel
outline; (2) structure, such as a house, apartment, or office; (3) structure
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internals, such as rooms within the structure; and (4) air-space above the
land. Id. at 8:51–56. In step 504, red green blue (RGB) image data is
captured from each of the spatial boundaries. Id. at 8:57–58. In step 506,
panorama images are created from the RGB image data. Id. at 9:4–5.
Processing continues with step 508, in which the camera geometry is
determined by use of first pass feature detection within the panoramas in
order to spatially calibrate the panoramas. Id. at 9:10–12. In step 510, a
second pass feature detection algorithm is applied. Id. at 9:22–26.
Conversion is performed in step 512. Id. at 9:33–35.
Processing proceeds to step 514, in which the 3D data is used to
generate a parcel map, such as the exterior and aerial views of the real estate,
and a floor plan. Id. at 9:62–64.
In step 516, the 3D data is used to generate a geometric proxy for the
3D model of the real property. Id. at 10:1–2. In step 518, the results are
combined and a 3D scene that has photorealistic views from within a
panorama capture location, as well as semi-photorealistic views from other
locations using a geometric proxy and real image data are rendered to a
viewer. Id. at 10:3–8. In addition to the 3D views, 2D floor plans are shown
to the viewer user as well as descriptive spatial boundary labels. Id. at 10:8–
11.
E. Illustrative Claim
Of the challenged claims, claims 1 and 18 are independent. Claims 2–
17 depend from claim 1 and claims 19–23 depend from claim 18. Claim 1 is
illustrative and reproduced below.
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[1.1]1 1. A computer-readable memory medium containing
program commands for controlling a computer processor, when
executed, to provide image-based rendering of a real property,
by performing a method comprising:
[1.2] obtaining two or more views from capture locations in a
plurality of spaces of the real property using ground truth
image data, the ground truth image data including images of
the real property captured from the capture locations;
[1.3] defining a plurality of spatial boundaries of the plurality of
spaces of the real property, each spatial boundary delineating
a volume of one or more of the plurality of spaces, at least one
of the plurality of spatial boundaries defining a parcel outline
of the real property, and at least one of the plurality of spatial
boundaries defining a space located within the parcel outline;
[1.4] annotating the ground truth image data by annotating at
least some of the captured images of the real property with
information indicating a capture location of a corresponding
image relative to a corresponding spatial boundary, each
capture location identifying a location within the
corresponding spatial boundary defined space or identifying
the space delineated by the corresponding spatial boundary;
[1.5] combining and processing two or more instances of the
ground truth image data to create a plurality of synthesized
views, wherein the synthesized views comprise one or more
of composites, transitions, or projections derived from
processing ground truth image data, and wherein the
synthesized views are associated with corresponding spaces
of the plurality of spaces of the real property;
[1.6] generating and rendering a virtual model of a current space
within the plurality of spaces of the real property from a
perspective of a current view, the current view being one of
the plurality of views obtained using ground truth image data
or one of the plurality of synthesized views derived from

1 Petitioner’s designations to reference the elements of claim 1 are set forth
in brackets. Pet. 19–41. Herein we refer to the elements of claim 1 using
Petitioner’s designations.
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processing ground truth data and associated with the current
space;
[1.7] identifying the current space in the real property where the
current view is located using the capture locations indicated
by the annotated ground truth image data;
[1.8] visually presenting, on the user interface, at least a portion
of the virtual model, a map user interface element, and a text
user interface element, the map user interface element
indicating a position of the current view in the current space,
the text user interface element including a label identifying
the current space in the real property within which the current
view is located;
[1.9] wherein the portion of the virtual model, the map user
interface element, and the text user interface element are
functionally linked based on the position of the current view
in the real property.
Ex. 1001, 16:21–17:6.
F. Evidence Relied on by Petitioner
Petitioner relies on the following evidence:2
References Date Exhibit
Cowtan
U.S. Patent Application
Publication No.
2019/0031246 A1
Published Jan. 9, 2009 Ex. 1008

2 The ’973 patent issued from Application No. 16/681,287, filed November
12, 2019, which is a continuation of application No. 16/130,555, filed on
September 13, 2018, now U.S. Patent No. 10,510,111, which is a
continuation of Application No. 15/832,653, filed on December 5, 2017,
now U.S. Patent No. 10,102,673, which is a continuation of Application No.
14/525,057, filed on October 27, 2014, now U.S. Patent No. 9,836,885.
Ex. 1001 at codes (21), (22), (63). The ’973 patent also claims priority to
Provisional Application 61/895,978, filed October 25, 2013. Id. at code
(60).

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References Date Exhibit
Bell436
U.S. Patent Application
Publication No.
2014/0043436 A1
Published Feb. 13, 2014,
Filed Ex. 1009

Petitioner also relies on the Declaration of Yasutaka Furukawa, Ph.D.
(Ex. 1004).
G. Asserted Ground of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following ground:
Claim(s) Challenged 35 U.S.C. §3 Basis
1–23 103 Cowtan and Bell436
II. ANALYSIS
A. Discretion Under 35 U.S.C. § 314(a)
Patent Owner contends we should exercise our discretion under
35 U.S.C. § 314(a) to deny institution of inter partes review. Prelim. Resp.
10–19 (citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
(PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Because we determine
that Petitioner fails to demonstrate that there is a reasonable likelihood that it
would prevail with respect to at least one of the claims challenged in the
petition, we need not address Patent Owner’s contentions concerning
discretionary denial.

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
Because the effective filing date of the ’973 patent appears subsequent to
March 16, 2013 (Ex. 1001, codes (22), (63)), we refer to the post-AIA
versions of §§ 102, 103.
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B. Legal Standards
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring inter partes review
petitions to identify ‘with particularity . . . the evidence that supports the
grounds for the challenge to each claim’”). That burden never shifts to the
patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
1378 (Fed. Cir. 2015). Furthermore, Petitioner cannot satisfy its burden of
proving obviousness by employing “mere conclusory statements.” In re
Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person of ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) when in evidence, objective
evidence of nonobviousness.4 Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).

4 Patent Owner does not present objective evidence of nonobviousness with
its Preliminary Response.
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C. Level of Ordinary Skill
Petitioner asserts that one of ordinary skill in the art at the pertinent
time of the ’973 patent “would have a Bachelor of Science in Computer
Science, or similar education, an understanding of the various techniques for
image-based rendering, and at least 2 years of experience in their field of
study, or equivalent practical experience in the relevant field.” Pet. 6.
Patent Owner has not made its own assertion of the level of ordinary skill.
Prelim. Resp. 6. Nor has Patent Owner expressed disagreement with
Petitioner’s articulation. See id. Patent Owner states:
Patent Owner does not take issue with Petitioner’s proposed
definition of a person of ordinary skill in the art at this time but
reserves the right to challenge Petitioner’s definition of a person
of ordinary skill in the art should it become necessary if a trial is
instituted.
Id.
We find that the phrase “at least” in Petitioner’s proposed definition
creates a vague, open-ended upper bound for the level of ordinary skill, and
we therefore do not adopt that aspect of the proposal. With that exception,
considering the subject matter of the ’973 patent, the background technical
field, and the asserted prior art, we otherwise agree with Petitioner’s
proposed qualifications for an ordinary level of skill. Petitioner’s proposed
definition is consistent with the level of skill reflected in the specification of
the ’973 patent and the asserted prior art references. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
Accordingly, for purposes of this decision, and based on the current
record, we adopt Petitioner’s assessment of the level of skill for one of
ordinary skill in the art, except without the “at least” phrase.

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D. Claim Construction
The parties provide contentions regarding construction of certain
claim terms. To resolve the disputes between the parties, we need to address
only the parties’ claim construction contentions for the terms “parcel
outline” and “space.” See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining “we need only
construe terms ‘that are in controversy, and only to the extent necessary to
resolve the controversy.’”); see also U.S. Surgical Corp. v. Ethicon, Inc.,
103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim construction is not
necessary when it is not “directed to, or has been shown reasonably to affect,
the determination of obviousness”).
1. Legal Standards
We construe the challenged claims by applying the standard used in
federal courts, in other words, “the same claim construction standard that
would be used to construe the claim in a civil action under 35 U.S.C. [§]
282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under this standard,
the words of a claim generally are given their “ordinary and customary
meaning,” which is the meaning the term would have to a person of ordinary
skill at the time of the invention, in the context of the entire patent including
the specification. Phillips, 415 F.3d at 1312–13.
2. “parcel outline”
In the parallel district court proceeding, the parties agreed that the
term “parcel outline” means “a representation of the legal boundary of the
land (i.e., the property lines).” Ex. 1005, 1. We consider whether we should
use that agreed-to construction in the instant proceeding.
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The intrinsic record supports that the agreed-to construction is the
ordinary and customary meaning of “parcel outline.” The claim language
supports that the spatial boundaries both have a relationship to the real
property and also define a parcel outline. Ex. 1001, 16:33–34, 18:3–6
(reciting “defining a plurality of spatial boundaries of the plurality of spaces
. . . at least one of the plurality of spatial boundaries defining a parcel outline
of the real property”).
Consistently, the ’973 patent Specification describes that the spatial
boundaries define the land, which perhaps is a parcel outline, as one of a few
different alternatives. The relevant portion of the ’973 patent Specification
is below.
In step 502, the system creates or generates the spatial
boundaries in a model of the property that define the land
(perhaps a parcel outline), structure (e.g., house, apartment,
office, etc.), structure internals (e.g., bedrooms, kitchens,
hallways, etc.) and/or air-space above the land (e.g., via
quadcopter or pole-based data capture of aerial views).
Id. at 8:51–56 (emphasis added).
As set forth above, spatial boundaries that define a parcel outline are
distinguishable from spatial boundaries that define other aspects of real
property, such as structure, structure internals, or air-space above the land.
Id. The ’973 patent Specification supports that the construction agreed to by
the parties in the parallel district court proceeding is the ordinary and
customary meaning of “parcel outline.”
Other evidence of record also supports adopting the parties’ agreed-to
construction. In particular, Dr. Furukawa testifies that he understands “that
‘parcel outline’ means ‘a representation of the legal boundary of the land
(i.e., the property lines).’” Ex. 1004 ¶ 143 (citing Ex. 1005, 1).
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Accordingly, for purposes of this decision, we adopt the construction
that the parties agreed to in the parallel district court proceeding, i.e., that
“parcel outline” means “a representation of the legal boundary of the land
(i.e., the property lines).”
3. “space”
In the parallel district court proceeding, the district court determined
that “space” means “a virtual or real 3D volume.” Ex. 1005, 3. We consider
whether we should use the district court’s claim construction in the instant
proceeding.
Although Petitioner argued for a different claim construction in the
parallel district court proceeding (Ex. 1005, 3), Petitioner does not present
those arguments here and, further, Petitioner states that it has applied the
district court’s claim constructions in the instant proceeding. Pet. 6. Like
the construction adopted, Petitioner’s proposed construction in the parallel
district court proceeding is that “space” is a “3D volume.” Ex. 1005, 3.
Petitioner’s proposed construction in the district court proceeding includes
additional limitations that we need not consider here. Id.
The intrinsic record supports that the district court’s claim
construction is the ordinary and customary meaning of “space.” The claim
language supports that the “space” has a relationship to real property. Ex.
1001, 16:30–31, 18:51–52 (reciting “a plurality of spaces of the real
property”). The claims also recite “generating and rendering a virtual model
of a current space.” Id. at 16:53–54, 19:13–14.
Consistently, the ’973 patent Specification describes that the capture
process includes defining spatial boundaries and the processing pipeline that
operates on the data output from the capture process involves 3D
reconstruction. Ex. 1001, 7:49–57. Furthermore, the ’973 patent provides a
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description of computer-implemented image-based rendering 100 that
includes as step 502 creating or generating the spatial boundaries in a model
of the property. Id. at 8:47–56. The ’973 patent describes that computer-
implemented image-based rendering 100 provides “a three-dimensional (3D)
virtual model of a real property.” Id.
Patent Owner asserts that “the provisional application upon which the
‘973 Patent claims benefit states that the ‘[s]ystem enables the definition of
one or more, three dimensional spatial boundaries to be defined within a
given real estate environment.’” Prelim. Resp. 30 (citing Ex. 1003, 4).
Patent Owner’s assertion is supported by the disclosure in the provisional
application that the system “enables the definition of one or more, three
dimensional spatial boundaries to be defined within a given real estate
environment.” Ex. 1003, 4.
Accordingly, for purposes of this decision, we adopt the district
court’s construction, i.e., that “space” means “a virtual or real 3D volume.”

E. Alleged Obviousness of
Claims 1–23 over Cowtan and Bell436436
1. Overview of Cowtan
Cowtan is titled “Internet-Based, Dual-Paned Virtual Tour
Presentation System with Orientational Capabilities and Versatile Tabbed
Menu-Driven Area for Multi-Media Content Delivery” and published on
January 29, 2009. Ex. 1008, codes (43), (54).
Cowtan describes providing “multi-media virtual tours in the real
estate industry.” Ex. 1008 ¶ 2. Figure 1 of Cowtan is reproduced below.
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Figure 1 illustrates graphical user interface (GUI) 100 for an Internet-
based multi-media virtual tour presentation system. Id. ¶ 16. GUI 100 has
(1) image navigation section 110–190, (2) image display section 200–260,
and (3) hierarchical information organization and navigation section 270–
440. Id. ¶¶ 110–113.
Image navigation section 110-190 comprises one or more of the
following: left select button 110, slide bar 120, right select button 130, first
thumbnail 140, second thumbnail 150, third thumbnail 160, fourth thumbnail
170, fifth thumbnail 180, and sixth thumbnail 190. Id. ¶ 111. Image display
section 200–260 comprises, among other things, photographic or panoramic
image or streaming video display section 250. Id. ¶ 112. In image
navigation section 110–190, a user may select one of the thumbnails to
display a corresponding full size image in photographic or panoramic image
or streaming video display section 250. Id. ¶ 117.
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Hierarchical information organization and navigation section 270-440
includes, among other things, plan-based navigation system 370 comprising
a plurality of photograph, panorama, or video point of origin and orientation
icons 380. Id. ¶ 113. Plan-based navigation system 370 displays an image
corresponding with a floor plan for the subject property. Id. ¶ 123. Each
photograph, panorama, or video point of origin and orientation icons 380
corresponds with one of the photographs or videos from the thumbnails in
image navigation section 110–190. Id.
2. Overview of Bell436
Bell436 is titled “Capturing and Aligning Three-Dimensional Scenes”
and published on February 13, 2014. Ex. 1008, codes (43), (54).
Bell436 describes capturing and aligning multiple 3D scenes with one
another. Ex. 1009 ¶ 3. Figure 2 of Bell436 is reproduced below.

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Figure 2 illustrates a graphical user interface with windows with view of the
capture process and has primary 3D rendering 202 of successfully aligned
captured 3D data 208 shown on display 201. Id. ¶¶ 56, 61.
As shown in Figure 2, primary 3D rendering 202 allows the user to
see what areas have been captured. Id. Data 208 shown in primary 3D
rendering 202 includes sets of points captured at various times by a 3D
capture device with the different sets aligned into a common coordinate
system for display. Id. ¶ 63. A user selects a location, area, or previous
capture position on primary 3D rendering 202 or map view 205. Id. ¶ 75.
Map view 205 is displayed in two dimensions and gives users a larger
context for their position. Id. ¶ 81. The graphical user interface illustrated
in Figure 2 includes set of controls 206 for the scan process. Id. ¶ 82.
3. Claim 1
(a) Does the Petition explain sufficiently how the teachings
of Cowtan and Bell436 would have been combined?
Petitioner asserts that claims 1–23 are unpatentable under 35 U.S.C.
§ 103 as obvious over Cowtan and Bell436. Pet. 4. Petitioner relies on the
combined teachings of Cowtan and Bell436 for element 1.3, i.e., “defining a
plurality of spatial boundaries of the plurality of spaces of the real property,
each spatial boundary delineating a volume of one or more of the plurality of
spaces, at least one of the plurality of spatial boundaries defining a parcel
outline of the real property.” We consider whether Petitioner has provided
sufficient explanation showing how a person of ordinary skill in the art
would have combined the teachings of Cowtan and Bell436 so as to meet the
subject matter recited in element 1.3.
For the reasons given above with respect to claim construction, for
purposes of this decision, we adopt the constructions that are being used in
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the parallel district court proceeding. In particular, we use the parties’
agreed-to construction that “parcel outline” means “a representation of the
legal boundary of the land (i.e., the property lines).” Ex. 1005, 1. Also, we
use the district court’s determination that “space” means “a virtual or real
3D volume.” Id. at 3.
We start with a portion of the Petition having the title “Motivation to
combine Cowtan and Bell436.” Pet. 17. Petitioner asserts that a person of
ordinary skill in the art would have looked to Bell436’s 3D modeling
technology and techniques for rendering 3D scenes to use with Cowtan’s
virtual tours of real estate. Id. at 17–18 (citing Ex. 1004 ¶ 109) (“A person
of ordinary skill in the art reading Cowtan naturally would look to existing
techniques for generating 3D models and rendering 3D scenes, such as that
described in Bell436.”), 19 (concluding “it would have been obvious to a
POSITA[5] to use the 3D modeling technology disclosed in Bell436 for the
3D walkthroughs, floorplans, visualizations or renderings disclosed in
Cowtan for providing Internet-based virtual tours of real estate.”)
The aforementioned contention is too conclusory and vague with
respect to how a person having ordinary skill in the art would have
combined the teachings of the asserted art to meet element 1.3. For instance,
Petitioner does not identify differences between either Cowtan and Bell436
and element 1.3 or how Petitioner proposes to combine or modify the
asserted prior art to meet element 1.3. Also, Petitioner’s contention does not
address the ordinary and customary meaning of the terms “parcel outline”
and “space” with sufficient specificity.

5 POSITA is person of ordinary skill in the art.
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Furthermore, Petitioner’s contention does not take into account that
Cowtan also teaches 3D modeling technology and 3D rendering techniques.
Indeed, Petitioner relies on Cowtan’s teachings of 3D modeling technology
and 3D rendering techniques in its element-by-element assertion for claim 1.
See, e.g., id. at 17 (asserting that Cowtan discloses “3D rendering[s]”), 18
(asserting that both Cowtan and Bell436 “describe the use of similar known
techniques, such as 3D models”), 20 (asserting that Cowtan teaches “3D
visualizations” and “3D rendering”), 31–32 (asserting that Cowtan
“discloses, and shows in Figures 1 and 12, a ‘multimedia dual-paned virtual
tour presentation system having orientational capabilities’ which provides
‘3D visualizations,’ such as ‘3D plans for multi-floors and from different
points of origin, 3D walkthroughs, 3D Flyaround and the like’ as ‘a digital
representation of a 3D space’ of a given real estate property”), 32 (asserting
that “Cowtan presents a virtual model of a selected space”), 37 (describing
Cowtan as visually presenting a virtual model), 39 (asserting that Cowtan’s
“3D visualizations ” correspond to a virtual model). Petitioner’s contention
that Bell436’s 3D modeling technology and techniques for rendering 3D
scenes would have been used with Cowtan’s teachings does not explain
sufficiently whether Petitioner contends that a person of ordinary skill in the
art would have substituted Bell436’s technology and techniques for those of
Cowtan, or whether Petitioner proposes combining the 3D modeling
technologies and 3D rendering techniques of the two references in some
manner.
Petitioner does not remedy the deficiency in its element-by-element
analysis. In particular, Petitioner relies on Bell436 for the first portion of
element 1.3, i.e., defining a plurality of spatial boundaries of the plurality of
spaces of the real property.” Pet. 22 (“Bell436 discloses the generation of
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spatial boundaries.”), 22–23 (asserting that Bell436’s techniques teach
“spatial boundaries of the plurality of spaces”). In the portions of Bell436
relied on by Petitioner, Bell436 teaches techniques for 3D modeling and
rendering 3D scenes that involves using assumptions about planes and
defining plane objects. For instance, Bell436 describes that “assumptions
about planes being flat and potentially perpendicular may be used to reduce
the potential for drift.” Ex. 1009 ¶ 133. Bell436 also teaches identifying
planes and using their position and orientation “to define plane objects,”
such as “boundaries, edges, corners, adjacent planes, location,” and visual
appearance information. Id. ¶ 134.
For the remainder of element 1.3, Petitioner asserts that Bell436 “can
be combined with techniques, such as those disclosed in Cowtan, for
defining rooms, floors, and floorplans in a real property as well as parcel
boundaries.” Pet. 23 (citing Ex. 1008 ¶ 189, Figs. 7–10, 13). Petitioner also
asserts that “Cowtan discloses defining the parcel outline for the property.
For example, Cowtan discloses defining the boundaries of the ‘2D plotplan’
(parcel boundary for a given property).” Id. at 25 (citing Ex. 1008, Fig. 7).
Figure 7 of Cowtan is reproduced below.

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Figure 7 of Cowtan, above, shows an example where seven sub tabs
are provided for loading a floor plan before content is loaded into the
system. Ex. 1008 ¶ 23. Cowtan describes Figure 7 as “an example where
seven sub tabs are provided for loading a floor plan” into the system. Ex.
1008 ¶¶ 23, 136. Cowtan describes that the screen may comprise certain
tabs, icons, and indicators. Id. ¶ 136. The terms “Plotplan” and
“Landscape” are found in a column identified by “1005,” which Cowtan
describes as “floor plan sub tab names 1005.” Id. ¶ 136, Fig. 7.
Petitioner does not explain sufficiently how Bell436’s identification of
planes and definition of plane objects would have been combined with
Cowtan’s sub tab names “Plotplan” and “Landscape” to teach element 1.3
using the district court claim constructions that “space” means “a virtual or
real 3D volume” and that “parcel outline” means “a representation of the
legal boundary of the land (i.e., the property lines),” which we adopt. See
§§ II.D.2, II.D.3. Even assuming Bell436’s techniques pertain to
identification of planes and definition of plane objects relating to 3D spaces
as required by the ordinary and customary meaning of the term “space” (see
§ II.D.3), Bell436’s disclosures pertain to 3D spaces of man-made
structures. See, e.g., Ex. 1009 ¶ 133 (describing that Bell436’s technique
“can be useful in situations for which the environment being scanned is a
man-made structure that is supposed to have flat floors, walls, or other
surfaces” (emphases added).) Petitioner does not explain sufficiently how
Bell436’s techniques relating to flat surfaces of man-made structures would
have been combined with Cowtan’s teachings to define a parcel outline, i.e.,
“a representation of the legal boundary of the land (i.e., the property lines)”
as required by the ordinary and customary meaning of “parcel outline.” See
§ II.D.2 (emphasis added).
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Cowtan’s Figures 8–10 indicate that they pertain to 2D floorplans. Ex.
1008, Figs. 8–10. The ordinary and customary meaning of the term “space”
is “a virtual or real 3D volume.” Ex. 1005, 3. Cowtan’s Figure 13 is
described as “similar to FIG. 7” (Ex. 1008 ¶ 29) and appears similar to
Figure 7. Compare id. at Fig. 13, with id. at Fig. 7. Petitioner’s assertions
relating to Figures 8–10 and 13 of Cowtan, therefore, do not remedy the
aforementioned deficiency.
Paragraph 189 of Cowtan is described as an “[e]xample XML file”
and appears to be a computer software file. Id. ¶ 189. Paragraph 189 spans
from page 12 to page 21 of Cowtan. See generally id. Petitioner does not
specify sufficiently what portions of paragraph 189 it relies on or how this
computer software file supports Petitioner’s position.
In its Reply to Patent Owner’s Preliminary Response, Petitioner
provides arguments responding to Patent Owner’s Preliminary Response.
Reply 5–7. Petitioner’s arguments should have been presented in the
Petition. As an additional, independent reason for our denial, even
considering Petitioner’s arguments in its Reply does not remedy the
aforementioned deficiency. For instance, Petitioner asserts that the Petition
refers to Bell436’s disclosure of generation of floorplans combined with
Cowtan’s teaching of techniques for defining rooms, floors, floorplans in a
real property as well as parcel boundaries without providing sufficient
explanation as to how the disclosures and teachings of the prior art
references would have been combined. Reply 6.
Petitioner also asserts that Patent Owner’s infringement contentions in
the parallel district court proceeding support Petitioner’s position. Id. at 5.
Petitioner’s argument appears to imply that we should adopt a broader
construction such that Bell436’s floorplan would suffice as the parcel
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Patent 10,592,973 B2
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outline. Id. Petitioner should have proposed and supported such
construction in the Petition. See 37 C.F.R. § 42.104(b)(3). Instead,
Petitioner asserts that it has applied the district court’s claim constructions.
Pet. 7. Additionally, the record indicates that Petitioner agreed to the
construction of “parcel outline” in the parallel district court proceeding. Ex.
1005, 1. Petitioner has not set forth any contrary claim construction
argument with sufficient clarity for us to consider it.
In summary, Petitioner does not explain with sufficient specificity in
what manner a person of ordinary skill in the art would have combined
Bell436’s modeling technology or rendering techniques with Cowtan’s
teachings to meet all elements of claim 1. Petitioner has not set forth with
sufficient clarity the differences between the claimed subject matter and the
prior art (see Graham, 383 U.S. at 17–18), and the Petition lacks sufficient
explanation as to the manner in which the prior art is combined to account
for those differences.
b) Does the Petition provide sufficient articulated reasoning
with a rational underpinning as to why one of ordinary skill in
the art would have combined the teachings of Cowtan and
Bell436?
We turn to whether Petitioner provided sufficient articulated
reasoning with a rational underpinning as to why one of ordinary skill in the
art would have combined the teachings of Cowtan and Bell436 in the
manner recited in claim 1. We again consider Petitioner’s contentions
provided under the title “Motivation to combine Cowtan and Bell436436,”
as well as contentions provided in Petitioner’s element-by-element analysis.
Pet. 20–22, 30, 33, 38, 43.
In its contentions, Petitioner points to similarities in Cowtan and
Bell436. Id. For instance, Petitioner asserts “Cowtan and Bell436436 both
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Patent 10,592,973 B2
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disclose the use of images (e.g., panoramas) to generate 3D scenes for
various types of spaces, including rooms and other spaces on properties.”
Id. at 17 (citing Ex. 1004 ¶¶ 105–108) (emphasis added). Petitioner also
asserts “[s]imilarly, both references [Cowtan and Bell436] describe the use
of similar known techniques, such as 3D models, to yield the same
predictable results.” Id. at 18.
Petitioner’s contentions pointing to similarities in Cowtan and Bell436
do not suffice as an articulated reason with rational underpinning to combine
their respective teachings––more is required to support the legal conclusion
of obviousness. See KSR, 550 U.S. at 418. The Federal Circuit has
concluded that merely asserting that two references were drawn from the
same field of art is “simply too conclusory” to show that the skilled artisan
would have combined these references in the way of the claimed invention.
Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App’x 971, 976 (Fed.
Cir. 2017); see Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981, 990 (Fed.
Cir. 2016) (determining that “the Board correctly concluded” that a
petitioner “did not articulate a sufficient motivation to combine” where the
only reason given was “that references were directed to the same art or same
techniques”). In the same way, Petitioner’s contentions here that the
references are similar, even if true, are insufficient to show why the skilled
artisan would have combined Cowtan and Bell436 to arrive at the subject
matter recited in the claims.
Petitioner also contends that a person of ordinary skill in the art
reading Cowtan “naturally would look to” Bell436’s techniques. Pet. 17–18.
Petitioner asserts that Cowtan and Bell436 both disclose the use of images to
generate 3D scenes for rooms in floorplans. Id. at 17. As discussed above
(see § II.E.3), the Petition does not explain with sufficient specificity in what
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Patent 10,592,973 B2
24
manner a person of ordinary skill in the art would have combined Bell436’s
modeling technology or rendering techniques with Cowtan’s teachings to
meet all elements of claim 1. Under the circumstances here, Petitioner’s
contention that a person of ordinary skill in the art reading Cowtan
“naturally would look to” Bell436’s techniques (Pet. 17–18) is conclusory
and does not suffice as an articulated reason with a rational underpinning to
combine the respective teachings of the references. See KSR, 550 U.S. at
418.
Petitioner also provides contentions as to why a person of ordinary
skill in the art could have combined the references. Pet. 18 (asserting that
Petitioner’s technology “could be used in real estate environments”)
(emphasis added), 33 (asserting that a person of ordinary skill in the art
would know that Bell436’s disclosures “could be used in real estate virtual
tour 3D visualizations as taught by Cowtan”) (emphasis added), 36
(asserting Bell436’s digital representations “could be displayed” using
Cowtan’s labels) (emphasis added). Those contentions, however, do not
explain sufficiently why one of ordinary skill in the art reading Cowtan
would have looked to specifically Bell436 for its particular teachings.
Petitioner also does not identify a persuasive reason why a skilled artisan,
viewing the teachings of Bell436, would have been motivated to modify
Cowtan. That a person of ordinary skill in the art could have done so is not
enough. 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.”); In re
Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014) (“[T]he mere capability of
pulling the handles is not the inquiry that the Board should have made; it
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Patent 10,592,973 B2
25
should have determined whether it would have been obvious to modify the
prior art apparatus to arrive at the claimed rowing machine.”).
Accordingly, we determine that Petitioner has not provided sufficient
articulated reasoning with a rational underpinning as to why one of ordinary
skill in the art would have combined the teachings of Cowtan and Bell436 in
the manner recited in claim 1.
4. Independent Claim 18
Independent claim 18 is similar to independent claim 1. Petitioner
relies on its assertion for claim 1 and does not provide contentions for claim
18 that remedy the deficiency discussed with respect to claim 1. Pet. 58.
Accordingly, for the reasons discussed with respect to claim 1, we conclude
that Petitioner has not demonstrated a reasonable likelihood that it would
prevail in showing that claim 18 is unpatentable under 35 U.S.C. § 103 as
obvious over Cowtan and Bell436.
5. Dependent Claims 2–17 and 19–23
We have considered Petitioner’s arguments and evidence for
dependent claims 2–17 and 19–23. Petitioner does not provide contentions
for claims 2–17 and 19–23 that remedy the deficiency discussed with respect
to claim 1. Accordingly, for the reasons discussed with respect to claim 1,
we conclude that Petitioner has not demonstrated a reasonable likelihood
that it would prevail in showing that claims 2–17 and 19–23 are
unpatentable under 35 U.S.C. § 103 as obvious over Cowtan and Bell436.

III. CONCLUSION
For the foregoing reasons, we conclude that the information presented
in the Petition does not establish a reasonable likelihood that Petitioner
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Patent 10,592,973 B2
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would prevail in showing that any of claims 1–23 of the ’973 patent is
unpatentable.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied, and we do not institute inter
partes review of any claim of the ’973 patent based on the ground asserted
in this Petition.

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Patent 10,592,973 B2
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For PETITIONER:
Hector J. Ribera
C.J. Alice Chung
MARTON RIBERA SCHUMANN & CHANG LLP
hector@martonribera.com
cjalice@martonribera.com

For PATENT OWNER:
Gregory S. Donahue
Andrew G. DiNovo
DINOVO PRICE LLP
gdonahue@dpelaw.com
adinovo@dinovoprice.com
docketing@dinovoprice.com