DIRTT ENVIRONMENTAL SOLUTIONS, LTD.

Patent Trials and Appeals Board

Sep 24, 2021

IPR2021-00654 (P.T.A.B. Sep. 24, 2021)

Trials@uspto.gov Paper 9
571-272-7822 Date: September 24, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
FALKBUILT LTD.,
Petitioner

v.

DIRTT ENVIRONMENTAL SOLUTIONS, LTD.,
Patent Owner.
____________

IPR2021-00654
Patent 10,467,814 B2
____________

Before KARA L. SZPONDOWSKI, STACY B. MARGOLIES, and
AARON W. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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Patent 10,467,814 B2

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I. INTRODUCTION
DIRTT Environmental Solutions, Ltd. (“Petitioner”) filed a petition
(Paper 2, “Pet.”) requesting inter partes review of claims 1–7, 10–16, and
19–20 of U.S. Patent No. 10,467,814 B2 (“the ’814 patent”), owned by
Falkbuilt Ltd. (“Patent Owner”). Patent Owner filed a preliminary response.
Paper 8 (“Prelim. Resp.”).
A. Related Proceedings
Petitioner asserts that “[t]he ’814 Patent has been asserted against
Petitioner in DIRTT Environmental Solutions, Ltd., et al. v. Falkbuilt Ltd.,
C.A. No. 1:20-cv-04637, pending in the U.S. District Court for the Northern
District of Illinois, which could affect, or could be affected by, a decision in
this proceeding.” Pet. 62. Petitioner advises that Patent Owner has also
asserted U.S. Patent No. 10,783,284 against Petitioner in that litigation, and
that Petitioner has filed a petition for post-grant review of that patent with
the Board. Id. at 63. That proceeding is PGR2021-00067.
B. The ’814 Patent
The ’814 Patent describes and claims techniques “to allow one or
more users to navigate and interact with a three-dimensional rendering of an
architectural design.” Ex. 1001, 1:65–2:1. In one embodiment, the system
“generates a coordinate system that associates a virtual coordinate system
within [an] architectural design schematic with a physical coordinate system
with a real-world environment” so that “when rendering the mixed-reality
elements that are associated with the architectural design schematic, the
elements appear within the correct position within the real-world
environment due to the common coordinate system.” Id. at 6:1–14.
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Figure 2 of the patent, reproduced below, “illustrates a user’s view of
a room within a mixed-reality environment 200,” showing a room that
includes a “triangle shaped cubicle 220,” a “desk surface 230,” and a “light
fixture 240.” Id. at 6:9–38.

“FIG. 2 illustrates a user’s view of a room within an embodiment
of a mixed-reality environment.” Ex. 1001, 3:29–30.
The patent explains that “[i]n addition to allowing a user to view
virtual elements within the real-world environment . . . disclosed
embodiments also provide tools for a user to interact with and change the
virtual elements.” Ex. 1001, 7:4–9. This is depicted in Figure 3:

“FIG. 3 illustrates a user interacting with the mixed-reality
environment depicted in FIG. 2.” Ex. 1001, 3:31–32.
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In the example shown in Figure 3 above, “the user interacts with the
mixed-reality light fixture 240 by making a pinching motion with their hand
310 that intersects at the lighting fixture 240 within the user’s view.” Ex.
1001, 7:18–21. The patent explains that “[u]pon making the pinching
motion, the user’s mixed-reality device 150(a-c) calculates a ray that extends
from a particular portion 300 of the user’s perspective towards the direction
in which the user pinched, or in this case, towards area 250.” Id. at 7:21–25.
The system may determine “what virtual object the user is interacting with
by extending the ray until it intersects with the target virtual object.” Id. at
7:64–66. Then, the system may identify “one or more functions associated
with [an] independently executable software object that is associated with
the at least one virtual object” and “generate a command interface within the
three-dimensional architectural model that depicts one or more commands
related to . . . one or more functions.” Id. at 8:2–5, 8:12–14.
The “independently executable software objects . . . provide context
and functionality specific to the individual architecture design elements with
which each independently executable software object is associated.”
Ex. 1001, 5:30–35. The patent explains that “an independently executable
software object comprises a set of computer-executable instructions used in
object-oriented program code, and which relate to a particular physical
component or feature.” Id. at 5:36–39.
C. Representative Claim
Challenged claims 1, 10, and 19 are independent. Claim 1 is directed
to a computer system for managing multiple distinct perspectives within a
mixed-reality design environment, claim 10 is directed to a corresponding
computer-implemented method, and claim 19 is directed to a corresponding
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system including a “mixed reality server.” Claim 1, which is representative
of the subject matter at issue, is reproduced below:
1. A computer system for managing multiple distinct perspectives
within a mixed-reality design environment, comprising:
one or more processors; and
one or more computer-readable media having stored thereon
executable instructions that when executed by the one or more
processors configure the computer system to perform at least
the following:
load a three-dimensional architectural model into memory,
wherein:
the three-dimensional architectural model is associated with
a virtual coordinate system, and
the three-dimensional architectural model comprises at least
one virtual object that is associated with an
independently executable software object that comprises
independent variables and functions that are specific to a
particular architectural element that is represented by the
at least one virtual object;
associate the virtual coordinate system with a physical
coordinate system within a real-world environment;
transmit to each device of multiple different devices rendering
information, wherein the rendering information comprises:
three-dimensional image data comprising rendering
instructions for the at least one virtual object within at
least a portion of the three-dimensional architectural
model, and
coordinate information that maps the virtual coordinate
system to the physical coordinate system
receive from a particular device of the multiple different
devices a ray that is determined based on a motion of a
user’s hand directed toward a rendered representation of the
at least one virtual object and that extends from a particular
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portion of a user’s field-of-view toward the rendered
representation of the at least one virtual object;
determine that the ray intersects with the rendered
representation of the at least one virtual object; and
identify one or more functions associated with the
independently executable software object that is
associated with the at least one virtual object.
Ex. 1001, 12:20–61.
D. Prior Art and Asserted Grounds
Petitioner asserts that claims 1–7, 10–16, and 19–20 are unpatentable
as obvious under 35 U.S.C. § 103 over Scranton,1 Maciocci,2 and “the
knowledge and skill of a person of ordinary skill in the art.” Pet. 2.
Petitioner also relies on a Declaration of Dr. Gregory F. Welch (Ex. 1002).
II. ANALYSIS
A. Level of Skill in the Art
The level of skill in the art is a factual determination that provides a
primary guarantee of objectivity in an obviousness analysis. See Al-Site
Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1323 (Fed. Cir. 1999) (citing Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966)). The level of skill in the art
also informs the claim construction analysis. See Teva Pharms. USA, Inc. v.
Sandoz, Inc., 574 U.S. 318, 332 (2015) (explaining that claim construction
seeks the meaning “a skilled artisan would ascribe” to the claim term “in the
context of the specific patent claim”).
Petitioner asserts that person of ordinary skill in the art “as of June 10,
2016 would have been a person with a working knowledge of virtual reality
––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––
1 U.S. Patent No. 9,367,950 (Ex. 1003).
2 U.S. Patent No. 9,047,698 (Ex. 1004).
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technologies, including augmented reality technologies, and also three-
dimensional design software such as architectural design software,” and that
such a person “would have had a Bachelor of Science degree in an academic
discipline emphasizing the design and application of electrical, computer, or
software technologies, in combination with training or at least one to two
years of related work experience with three-dimensional computer models
and virtual or augmented reality devices.” Pet. 3–4 (citing Ex. 1002 ¶¶ 41–
48). “Alternatively,” argues Petitioner, “the person could have also had a
Master of Science degree in a relevant academic discipline with
approximately one year of related work experience in the same discipline.”
Id. at 4. Patent Owner does not address this issue.
On this record, we adopt Petitioner’s proposal in part, finding the
skilled artisan to be a person with (a) “a Bachelor of Science degree in an
academic discipline emphasizing the design and application of electrical,
computer, or software technologies,” and (b) “training or at least one to two
years of related work experience with three-dimensional computer models
and virtual or augmented reality devices.” That description is generally
consistent with the disclosures of the ’814 patent and the prior art.
B. Claim Construction
We construe claims using the same claim construction standard that
would be used in a civil action under 35 U.S.C. § 282(b), as enunciated in
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and
subsequent cases. See 37 C.F.R. § 42.100(b).

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Petitioner asserts that because “the prior art’s description of the
claimed elements [are] similar to the description thereof in the specification
of the ’814 Patent, no formal claim constructions are necessary in this
proceeding.” Pet. 3. Patent Owner does not address claim construction.
We conclude that we need not engage in any formal claim
construction to resolve the issues addressed in this Decision. See Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy’”
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999))).
C. Reasonable Likelihood Analysis
As noted above, Petitioner asserts that claims 1–7, 10–16, and 19–20
are unpatentable over Scranton, Maciocci, and “the knowledge and skill of a
person of ordinary skill in the art.” See Pet. 26–73. Patent Owner responds
that Petitioner fails to establish a motivation to combine Scranton and
Maciocci (see Prelim. Resp. 3–25), and that the Petition should be denied
due to assignor estoppel (see id. at 25–29).
1. Scranton
Scranton “relates to dynamically presenting visualization of three-
dimensional (3D) designs produced by 3D design software.” Ex. 1003,
1:65–67. In one embodiment, a user may “visualize . . . a 3D design through
a virtual reality application while the design is in progress using 3D design
software,” in which “changes to the 3D design may be obtained
dynamically” and “virtual reality information may be determined based on
the dynamically obtained changes.” Id. at 2:1–5. “[U]sers may traverse the
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virtual space, manipulate the virtual objects in the virtual space, perform
operation, exercise control, and/or engage any other types of interactions
with the virtual space.” Id. at 6:55–58.
Scranton describes “3D information component 116” that “may be
configured to obtain 3D information from the files and/or changes to the
files imported by the file import component 114.” Ex. 1003, 10:27–30.
“The 3D information obtained by the 3D information component 116 may
include position, size, texture, materiality, sound, shading, lighting, color,
description, type, content, animation, scale, project, and/or any other
information about one or more objects in the 3D design produced by the 3D
design software.” Id. at 10:30–35. Scranton also describes “virtual reality
information component 118” that “may be configured to determine virtual
reality information based on the 3D information obtained by the 3D
information component 116.” Id. at 11:21–24. And there is also a “virtual
reality information provision component 120” that “may be configured to
provide the virtual reality information determined by the virtual reality
information determination component 118 to the users.” Id. at 11:44–46.
2. Maciocci
Maciocci “relates to an augmented or virtual reality system using a
head mounted display, or other mobile devices such as smartphones or
tablets, that can place a virtual object or interface on a selected physical
surface so that a single user or multiple users can collaborate to[] view and
interact with the virtual object on the physical surface.” Ex. 1004, 1:28–33.

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Figure 37, shown below, “illustrates a high level illustration of a
system 3700 that includes a virtual object reality input device or a virtual
pointer 3706 that is visible on a head mounted display 3704 and a high level
diagram of . . . virtual object 14.” Ex. 1004, 66:41–45.

“FIG. 37 is a high level block diagram of an embodiment
[with a] virtual pointer device that is controlled by a user’s finger
to select icons on the virtual object.” Ex. 1004, 5:51–55.
Maciocci describes how “[t]he processor measures a vector that may
be captured from the head mounted or body mounted camera 3701 to the
user’s finger 3705 and from the finger 3705 to the virtual object 14” and
that, “[u]sing the vector[,] an input device virtual object 3706 may be
generated and may be placed on the vector.” Ex. 1004, 67:14–18.
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3. Discussion
Independent claim 1 requires, among other things, loading a three-
dimensional architectural model associated with a virtual coordinate system
into memory, where the model “comprises at least one virtual object that is
associated with an independently executable software object that comprises
independent variables and functions that are specific to a particular
architectural element that is represented by the at least one virtual object.”
The claim thus requires that the “independently executable software object,”
not the “virtual object,” includes “independent variables and functions that
are specific to a particular architectural element that is represented by the at
least one virtual object.”
Petitioner observes that the ’814 patent describes how “an
independently executable software object comprises a set of computer-
executable instructions used in object-oriented program code, and which
relate to a particular physical component or feature.” Pet. 27–28 (quoting
Ex. 1001, 5:36–39). Petitioner asserts that the patent “provides no further
description of what it means to be ‘independently executable’ beyond the
elementary aspects of objects in object-oriented programming (e.g., objects
have properties and functions, and can have dependency relationships).” Id.
at 28.
Petitioner then argues that “Scranton discloses ‘at least one virtual
object that is associated with an independently executable software object,’”
because “Scranton discloses ‘virtual objects.’” Pet. 28–29 (citing Ex. 1003,
1:19, 1:24, 6:56, 16:24–25, 16:27–28, 18:15, 18:18). We agree that
Scranton discloses “virtual objects,” but Petitioner does not adequately
explain how Scranton’s virtual objects are “associated with an independently
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executable software object” or even identify an independently executable
software object.
Petitioner next points to Scranton’s description of how “users may . . .
manipulate the virtual objects in the virtual space” and “modify the design
through the 3D design software,” arguing that “[t]he ability to manipulate a
virtual object within a virtual space necessarily suggests that the virtual
object has associated manipulable properties and associated functions to
manipulate such properties.” Pet. 29 (citing Ex. 1:24–25, 6:55–56, 2:11–12;
Ex. 1002 ¶ 72). This is not persuasive because Petitioner fails to explain
why the fact that Scranton’s virtual objects can be manipulated means that
the virtual objects would necessarily be associated with a separate
“independently executable software object that comprises independent
variables and functions that are specific to a particular architectural element
that is represented by the at least one virtual object.”3
Petitioner also argues that Scranton’s “3D information component
116” and “virtual reality information component 118” can be implemented
in software, that “the ‘virtual objects’ in Scranton are associated with a
‘software’ object, e.g., the 3D or virtual reality information component,” and
that “[t]hese software objects are ‘independently executable,’” because
“[t]he server may be configured to execute . . . a 3D information component
[and] a virtual reality information determination component.” Pet. 29
(emphasis omitted). This is not persuasive.
––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––
3 In fact, Dr. Welch’s testimony suggests that, in general, such objects need
not include functions. See, e.g., Ex. 1002 ¶ 71 (“a POSITA would consider
“objects” in object-oriented programming to optionally include inherent
independent executable functions”).
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Petitioner fails to establish that Scranton’s “information components”
could correspond to the claimed “independently executable software object”
for several reasons. First, Petitioner does not show how the information
components are “objects,” where, as Petitioner acknowledges, the ’814
patent is using “object” in the object-oriented programming sense. See, e.g.,
Pet. 27–28; Ex. 1001, 5:28–67. Second, Petitioner fails to explain how or
why the components are “associated” with the virtual objects, where the
patent contemplates an association akin to that of objects in object-oriented
programming. See id. Third, although Petitioner asserts that the
components are “executable,” it fails to explain why they would be
considered to be “independently” executable. Finally, Petitioner fails to
explain how or why the components would “comprise[] independent
variables and functions that are specific to a particular architectural
element,” where Scranton’s components are software that obtains and
processes the 3D information, but do not appear to include the information
themselves. See Ex. 1001, 10:27–12:3.
Petitioner also argues that “Scranton explains in its ‘background’
section that 3D design software produces computer models that ‘generate
and manage digital representations of physical and functional characteristics
of the space,’ where the physical characteristics are represented by software
variables and the functional characteristics would be realized by software
functions.” Pet. 30. This, too, is unpersuasive. First, Scranton does not say
that “the physical characteristics are represented by software variables and
the functional characteristics would be realized by software functions”—that
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is Petitioner’s language.4 Second, Petitioner does not explain how or why
the “functional characteristics” would need to be “realized by software
functions.” For example, Petitioner does not show that those characteristics
could not be represented by simple parameters. Third, Petitioner does not
explain how or why any such “software functions” would be found in an
“independently executable software object,” as claimed.
Petitioner next argues that “Scranton discloses that the virtual objects
within such models have numerous modifiable properties and include any
type of information that 3D design software might produce in connection
with a 3D model, such as physical or functional characteristics.” Pet. 30.
That contention concerns the “virtual object,” not an “independently
executable software object,” and, in any event, Petitioner does not identify
anything in the 3D information5 that would be a “function.”
Finally, Petitioner cites Exhibit 1014, which is a manual for a product
called Autodesk Revit. See Pet. 30–31. Exhibit 1014 is not part of the
combination (see id. at 2) and, in any event, the quoted material shows only
that the Revit models included parameters, not functions (see id. at 30–31).

––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––
4 See Ex. 1003, 1:34–38 (“Such software typically enables a user to compose
. . . models, specify layout of those models in a space, generate and manage
digital representations of physical and functional characteristics of the space,
and/to perform any other tasks for 3D designs.”).
5 See Ex. 1003, 10:30–35 (“The 3D information . . . may include position,
size, texture, materiality, sound, shading, lighting, color, description, type,
content, animation, scale, project, and/or any other information about one or
more objects in the 3D design produced by the 3D design software.”).
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Because Petitioner has not sufficiently shown that Scranton’s virtual
objects are “associated with an independently executable software object
that comprises independent variables and functions that are specific to a
particular architectural element that is represented by the at least one virtual
object,” Petitioner has not shown a likelihood that it will prove independent
claim 1 obvious. And, because all of the other challenged claims include
corresponding language, Petitioner has not shown a reasonable likelihood
that it will prove the other challenged claims obvious either.6
III. CONCLUSION
Petitioner has not shown a reasonable likelihood that it would prevail
in showing that claims 1–7, 10–16, and 19–20 of the ’814 patent are
unpatentable.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied, and no trial is instituted.

––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––
6 Because this issue is dispositive, we need not, and therefore do not, reach
Patent Owner’s arguments regarding the motivation to combine and assignor
estoppel.
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FOR PETITIONER:

David Gerasimow
THE LAW OFFICES OF DAVID A. GERASIMOW, P.C.
dave@erasimowlaw.com

John Handy
IP ADVANCED LLC
jhandy@ipadvanced.com

FOR PATENT OWNER:

Timothy Sendek
Robyn Bowland
John Schafer
AKERMAN LLP
Tim.sendek@akerman.com
Robyn.bowland@akerman.com
Jay.schafer@akerman.com