D3D TECHNOLOGIES, INC.

Patent Trials and Appeals Board

Dec 2, 2021

IPR2021-00877 (P.T.A.B. Dec. 2, 2021)

Trials@uspto.gov Paper 14
571-272-7822 Entered: December 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MICROSOFT CORPORATION,
Petitioner,
v.
D3D TECHNOLOGIES, INC.,
Patent Owner.

IPR2021-00877
Patent 9,980,691 B2

Before JAMESON LEE, BARBARA A. PARVIS, and SCOTT RAEVSKY,
Administrative Patent Judges.

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

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I. INTRODUCTION
On May 21, 2021, Microsoft Corporation (“Petitioner”) filed a
Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1–4, 6–
9, and 11–21 (“challenged claims”) of U.S. Patent No. 9,980,691 B2
(Ex. 1001, “the ’691 patent”). D3D Technologies, Inc. (“Patent Owner”)
filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). With our
authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
Response (Paper 11, “Reply”) and Patent Owner filed a Sur-Reply (Paper
12, “Sur-reply”).
Petitioner concurrently filed another petition for inter partes review of
claims 1–9 and 11–21 of the ’691 patent. Microsoft Corporation v. D3D
Technologies, Inc., IPR2021-00878, Paper 2 (PTAB May 21, 2021) (“the
’878 Petition”). In the instant proceeding, Petitioner filed a Notice Ranking
and Explaining Material Differences Between Petitions (Paper 3, “Ranking
Notice”), which ranks the Petition in the instant proceeding second. Ranking
Notice, 1–2. Patent Owner filed a Response to Petitioner’s Ranking Notice
(Paper 9, “Response to Ranking Notice”). As set forth in the decision on
institution in IPR2021-00878, an inter partes review of claims 1–9 and 11–
21 of the ’691 patent is instituted with respect to all grounds set forth in the
’878 Petition. See IPR2021-00878, Paper 14.
Institution of an inter partes review is authorized by statute when “the
information presented in the petition . . . and any response . . . shows that
there is a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
Section 314(a) does not require the Director to institute an inter partes
review. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed.
Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an
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IPR proceeding.”). Rather, a decision whether to institute is within the
Director’s discretion, and that discretion has been delegated to the Board.
See 37 C.F.R. § 42.4(a); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
2140 (2016) (“[T]he agency’s decision to deny a petition is a matter
committed to the Patent Office’s discretion.”). The Board has discretion to
deny a petition even when a petitioner meets the threshold under § 314(a).
See General Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357,
Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i); see also Patent
Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019)
(“CTPG”) 55–63, available at
https://www.uspto.gov/TrialPracticeGuideConsolidated (identifying
considerations that may warrant exercise of this discretion).
For the reasons given below, after consideration of the parties’
submissions and the evidence of record, we exercise our discretion under 35
U.S.C. § 314 and deny institution of inter partes review in IPR2021-00877.
II. BACKGROUND
A. Real Parties-in-Interest
Petitioner identifies itself as the real party-in-interest. Pet. 87. Patent
Owner names itself as the real party-in-interest. Paper 4, 2.
B. Related Matters
Each party identifies a judicial matter that would affect, or be affected
by, a decision in this proceeding. In particular, the parties inform us that the
’691 patent is asserted in the following district court case: D3D
Technologies, Inc. v. Microsoft Corporation., No. 6:20-cv-01699 (M.D.
Fla.) (“parallel district court proceeding”). Pet. 87; Paper 4, 2–3. As
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indicated above, Petitioner filed another petition for inter partes review of
the ’691 patent, i.e., IPR2021-00878. See supra § I.
C. The ’691 Patent
The ’691 patent relates to the field of medical imaging. Ex. 1001,
1:16–17. The ’691 patent describes providing three-dimensional viewing of
images by a user. Id. at 2:57–58. The user selects a volume of interest from a
collection of image slices. Id. at 2:58–60.
Figure 1 is a block diagram of a computer system that produces a
three-dimensional image to the user and is reproduced below. Id. at 4:35–36.

Figure 1, above, is a diagram of system 10, which includes imaging device
12, digital recording device 14, general purpose processor (“processor”) 16,
and head display unit (HDU) 22, among other components. Id. at 5:21–53.
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Imaging device 12 communicates with digital recording device 14 to
record slices of imagery with metadata. Id. at 5:24–29. Processor 16 receives
input from user 24 and interacts with digital recording device 14 to generate
image for right eye 18 and image for left eye 20. Id. at 5:30–37. The images
are sent to HDU 22 worn by user 24. Id. at 5:44–45.
The ’691 patent describes a three-dimensional (3D) cursor which is
moved within the three-dimensional medical image space. Id. at 17:14–16.
Exemplary shapes of the cursor include a sphere and a cube. Id. at 17:16–17.
Control of the cursor is effected by a human machine interface, such as a joy
stick. Id. at 17:33–35, 17:41–43. The color of the cursor is a user option. Id.
at 17:24. Also, the size of the cursor may be modified. Id. at 17:30–32. The
three-dimensional cursor is moved to a specific sub-volume of interest, such
that the cursor contains the sub-volume of interest. Id. at 17:26–41.
D. Illustrative Claim
Petitioner challenges claims 1–4, 6–9, and 11–21 of the ’691 patent.
Pet. 1. Claims 1 and 20 are the independent claims. Claims 2–4, 6–9, and
11–19 depend directly from claim 1. Claim 21 depends directly from claim
20. Independent claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. [1 pre]1 A method comprising:
[1a] generating a three-dimensional image space or volume from
a plurality of two-dimensional radiological image slices;
[1b] generating a three-dimensional cursor that has a non-zero
volume;

1 Petitioner’s designations to reference the elements of claim 1 are set forth
in brackets. Pet. v. Herein we refer to the elements of claim 1 using
Petitioner’s designations.
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[1c] displaying the three-dimensional cursor in the three-
dimensional medical image space or volume;
[1d] responsive to a first input, moving said three-dimensional
cursor within the three-dimensional medical image space
or volume; and
[1e] responsive to a second input, selecting portions of the two-
dimensional radiological image slices corresponding to
the volume of the three-dimensional cursor for further
processing.
Ex. 1001, 22:49–63.
E. Evidence
Petitioner relies on the patent document references summarized in the
table below.
Name Patent Document Exhibit
Getty US 2009/0147073 A1 1005
Tomoda US 2004/0059214 A1 1006
Betting US 7,242,402 B1 1007
Traughber US 2015/0110374 A1 1008
Deering US 5,287,437 1009
Shimotani US 2013/0076876 A1 1010
Zhou US 2016/0129637 A1 1011
Schoolman US 5,488,952 1028

Petitioner relies on the non-patent literature reference summarized in
the table below.
Name Non-Patent Literature Title Author Exhibit
Cevidanes Image analysis and
superimposition of 3-
dimensional cone-beam
computed tomography
models, American Journal of
Orthodontics and
Dentofacial Orthopedics, Vol.
129, No. 5, pp 611-618, May
2006.
Lucia H. S.
Cevidanes et al.
1012
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F. Asserted Grounds
Petitioner asserts that the challenged claims of the ’691 patent are
unpatentable based on the following grounds summarized in the table below:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–3, 9, 12–15 1032 Getty, Tomoda
4 103 Getty, Tomoda, Betting
6 103 Getty, Tomoda, Traughber
7 103 Getty, Tomoda, Deering
8 103 Getty, Tomoda, Deering, Schoolman
11 103 Getty, Tomoda, Shimotani
16–19 103 Getty, Tomoda, Cevidanes
20, 21 103 Getty, Tomoda, Zhou
III. DISCRETIONARY DENIAL OF THE PETITION
A. Discretionary Denial — Parallel District Court Proceeding
Patent Owner contends we should exercise our discretion under
35 U.S.C. § 314(a) to deny institution of inter partes review based on the
trial date in the parallel district court proceeding. Prelim. Resp. 30–40
(citing, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
Mar. 20, 2020) (precedential)). Because we determine that we should
exercise our discretion under 35 U.S.C. § 314 and deny institution of inter
partes review for other reasons set forth below, we need not address Patent
Owner’s contentions concerning discretionary denial based on the parallel
district court proceeding.

2 The Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Based on the record
before us at this juncture (see, e.g., Pet. 2–4; Ex. 1001), we use an effective
filing date for the ’691 patent that is after the effective date of the applicable
AIA amendments. We, therefore, refer to the AIA version of 35 U.S.C.
§§ 102 and 103. Our determinations herein do not change regardless of
which versions of those statutes we use.
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B. Discretionary Denial — Parallel Petitions
In deciding whether to institute an inter partes review, we consider
the guidance in the Consolidated Trial Practice Guide, which states the
following:
Based on the Board’s experience, one petition should be
sufficient to challenge the claims of a patent in most situations.
Two or more petitions filed against the same patent at or about
the same time . . . may place a substantial and unnecessary burden
on the Board and the patent owner and could raise fairness,
timing, and efficiency concerns. . . .
Nonetheless, the Board recognizes that there may be
circumstances in which more than one petition may be necessary,
including, for example, when the patent owner has asserted a
large number of claims in litigation or when there is a dispute
about priority date requiring arguments under multiple prior art
references. In such cases two petitions by a petitioner may be
needed, although this should be rare.
CTPG 59.
Here, Petitioner filed two petitions on the same day, both challenging
claims 1–4, 6–9, and 11–21 of the ’691 patent. As Petitioner acknowledges
(Ranking Notice, 1), Petitioner also challenges claim 5 in the IPR2021-
00878 proceeding. See, e.g., ’878 Petition, 1. In this proceeding, Petitioner
presents eight obviousness grounds involving the same secondary references
applied in the IPR2021-00878 proceeding. Compare Pet. 2–3, with ’878
Petition, 1–2. In the instant proceeding, Petitioner relies on Getty as the
primary reference in each of its obviousness grounds (Pet. 2–3), whereas
Petitioner relies on US 2006/0279569 A1 (“Acosta”) as the primary
reference in the IPR2021-00878 proceeding. ’878 Petition, 1–2.
Petitioner ranks this Petition second between the two petitions.
Ranking Notice, 1–2. As a reason for instituting in both proceedings,
Petitioner first points to the difference in disclosures of Getty and Acosta
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with respect to the term “three-dimensional cursor” recited in the
independent claims. In particular, Petitioner contends that Getty “explicitly
discloses the use of a 3D cursor.” Id. at 2. Petitioner contends that
“[t]herefore, Petitioner did not find it necessary to advance a construction of
a ‘3D cursor’” in the instant proceeding. Id. Petitioner acknowledges,
however, “[b]ecause the ‘3D cursor’ is an important term in the ’691 Patent
claims, clarification of what a 3D cursor is would benefit all parties
including the Board.” Id. According to Petitioner, the benefit of providing
the construction is an “additional reason” that Petitioner ranks the ’878
Petition, which includes Petitioner’s construction of the term “three-
dimensional cursor,” ahead of the instant Petition. Id.
Patent Owner responds “to the extent that seeking a claim
construction in only one petition is asserted as justification for parallel
petitions, nothing prevented Petitioner from seeking claim constructions in
each of its petitions and if anything Petitioner was obligated to do so.”
Response to Ranking Notice, 3 (citing 37 C.F.R. § 42.104(b)(3)). Patent
Owner also asserts that contrary to its arguments here, in the parallel district
court proceeding Petitioner “has agreed that a ‘cursor’ as recited in the
claims of the ’691 patent is ‘an indicator moveable within a three-
dimensional image, image space, and volume.’” Prelim. Resp. 11 (citing Ex.
2005, 5). Patent Owner also advances an argument that Getty does not teach
“selecting portions of two-dimensional image slides corresponding to the
volume of a three-dimensional cursor.” Id. at 18 (emphasis added).
Petitioner has not persuaded us that any disclosure in Getty provides
sufficient support for instituting on both parallel petitions. Petitioner’s
argument pointing to the difference in disclosures of Getty and Acosta with
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respect to the term “three-dimensional cursor” recited in the independent
claims does not persuade us to institute on both parallel petitions.
Petitioner’s second reason for instituting in both proceedings is that
different grounds are presented and “[e]ach Petition provides a strong
showing of unpatentability and/or obviousness.” Ranking Notice, 2–3.
Patent Owner responds that “there is nothing special or unique about the
circumstances of this challenge to justify Petitioner’s getting two bites at the
’691 patent.” Response to Ranking Notice, 3. Patent Owner also asserts that
instituting on both parallel petitions would unfairly burden Patent Owner. Id.
at 4.
Having reviewed all Petitioner’s challenges, we are unable to discern
any material difference between the parallel petitions that would be
sufficient to outweigh the inefficiencies and costs to the Board and Patent
Owner that would result from instituting on both parallel petitions. The mere
fact that Petitioner may have had additional art to assert does not, on these
facts, justify the additional burden of a second petition directed to the same
claims.
In view of the above, Petitioner has not adequately explained why the
Petition in this proceeding contains sufficient material differences in its
analysis to support instituting an additional inter partes review of the
challenged claims. Accordingly, because we institute inter partes review of
claims 1–9 and 11–21 of the ’691 patent on the grounds presented in the
IPR2021-00878 petition, we exercise our discretion under § 314(a) to deny
institution in this proceeding.
IV. CONCLUSION
For the foregoing reasons, based on a balanced assessment of the
circumstances of this cases, we exercise our discretion under 35 U.S.C.
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§ 314, and deny the instant Petition requesting institution of inter partes
review of claims 1–4, 6–9, and 11–21 of the ’691 patent in IPR2021-00877.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to claims 1–4, 6–9, and 11–
21 of the ’691 patent in IPR2021-00877 and no trial is instituted in this case.

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FOR PETITIONER:

W. Karl Renner
Roberto J. Devoto
Usman A. Khan
FISH & RICHARDSON P.C.
axf-ptab@fr.com
devoto@fr.com
khan@fr.com

FOR PATENT OWNER:

Tarek N. Fahmi
Jonathan Tsao
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalaw.com
jonathan.tsao@ascendalaw.com