Falkbuilt Ltd v. DIRTT Environmental Solutions Ltd

1. Case Identification

• Case #: IPR2021-00654
• Patent #: 10,467,814
• Filed: March 11, 2021
• Petitioner(s): Falkbuilt Ltd.
• Patent Owner(s): DIRTT Environmental Solutions, Ltd.
• Challenged Claims: 1-7, 10-16, 19-20

2. Patent Overview

• Title: Mixed-Reality Architectural Design Environment
• Brief Description: The ’814 patent describes systems and methods for allowing multiple users to navigate and interact with a three-dimensional architectural model in a mixed-reality environment. The system uses hand motions to generate rays for selecting and manipulating virtual objects within the shared model.

3. Grounds for Unpatentability

Ground 1: Claims 1-7, 10-16, and 19-20 are obvious over Scranton in view of Maciocci.

• Prior Art Relied Upon: Scranton (Patent 9,367,950) and Maciocci (Patent 9,047,698).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that the combination of Scranton and Maciocci disclosed all limitations of the challenged claims. Scranton was argued to teach a foundational system for providing a virtual reality (VR) experience to visualize 3D architectural designs (e.g., from CAD or BIM software) for multiple users. This system included a server that loads a 3D model, associates a virtual coordinate system with a physical coordinate system (based on an HMD's position), and transmits rendering information to multiple client devices. Scranton also taught that users could interact with and manipulate virtual objects using inputs like a "data glove."

  Petitioner argued that Maciocci supplemented Scranton's teachings, particularly regarding user input. Maciocci described a collaborative augmented reality (AR) system where users interact with virtual objects using gesture controls, eliminating the need for a physical device like a data glove. Critically, Maciocci was asserted to explicitly teach the key limitation that led to the ’814 patent’s allowance: receiving a "ray" or "vector" determined by a user's hand motion directed toward a virtual object. Maciocci's system measured a vector from the HMD to the user's finger and then to the virtual object to determine intersection and enable selection or manipulation. Maciocci also disclosed generating user-specific command interfaces (e.g., menus) that appear upon gestural selection, addressing limitations in dependent claims.

  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Scranton and Maciocci. Scranton provided the core architectural VR collaboration system but suggested using a "data glove," which Petitioner characterized as obsolete technology by the priority date of the ’814 patent. A POSITA would have sought to improve Scranton’s system by incorporating a more modern and intuitive input method. Maciocci provided a known solution for gestural input in a multi-user AR/VR environment. Therefore, a POSITA would have logically replaced Scranton's cumbersome data glove with the well-documented, camera-based gesture and ray-casting system taught by Maciocci to create a more seamless and effective user experience.

  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination. Both references operated in the same technical field of AR/VR and addressed similar problems of user interaction with virtual objects. Integrating a known gestural input method (Maciocci) into a known VR visualization platform (Scranton) was presented as a straightforward application of existing technologies that would have yielded predictable results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under either 35 U.S.C. §314(a) or §325(d) would be inappropriate. Regarding the Fintiv factors, Petitioner asserted that the parallel district court litigation was in its earliest stages, with no trial date set, no scheduling order issued, and minimal investment by the court and parties.
• Petitioner presented a unique circumstance counseling against denial: the Patent Owner had asserted the doctrine of assignor estoppel in the co-pending litigation. Petitioner argued that if this defense succeeded, the IPR would be the only available forum for Petitioner to challenge the validity of the ’814 patent.
• Petitioner also contended that denial under §325(d) was unwarranted because the prior art presented in the petition was not before the Examiner during prosecution. Specifically, Maciocci was argued to directly teach the central limitation (a ray determined by hand motion) that the Examiner identified as the basis for allowing the claims, meaning the petition raised issues the Examiner never considered.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7, 10-16, and 19-20 of the ’814 patent as unpatentable.