Microsoft Corp v. D3D Technologies Inc

1. Case Identification

• Case #: IPR2021-00877
• Patent #: 9,980,691
• Filed: May 21, 2021
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): David Byron Douglas
• Challenged Claims: 1-4, 6-9, and 11-21

2. Patent Overview

• Title: Method and Apparatus for Three Dimensional Viewing of Images
• Brief Description: The ’691 patent discloses a method for viewing three-dimensional (3D) medical images. The core of the invention involves using a movable 3D cursor with a non-zero volume to select a region of interest within a 3D medical image space, which is generated from a plurality of two-dimensional (2D) radiological image slices.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-3, 9, and 12-15 over Getty and Tomoda

• Prior Art Relied Upon: Getty (Application # 2009/0147073) and Tomoda (Application # 2004/0059214).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Getty and Tomoda (GTC) rendered the claims obvious. Getty was cited for teaching a stereoscopic 3D medical imaging system that generates a 3D image space from 2D radiological slices. Getty also disclosed using a movable 3D cursor with a non-zero volume (e.g., a cube) to select and mark regions of interest (ROIs). Petitioner asserted this met the limitations of generating a 3D volume, generating a volumetric 3D cursor, displaying the cursor, and moving it in response to a first input. Tomoda was cited for its method of selecting a 3D ROI and, in response to that selection (a second input), searching the original 2D image slices and displaying those that correspond to the selected ROI. Petitioner contended that adding Tomoda's functionality to Getty's system supplied the final step of claim 1: selecting portions of the 2D radiological slices corresponding to the 3D cursor's volume for further processing.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings to improve medical diagnosis. By viewing the original 2D slices corresponding to a 3D ROI selected by Getty's cursor, a clinician could gain a better understanding of the tissue content within that volume, which might be obscured in the 3D rendering. Furthermore, Tomoda’s method of retrieving original 2D slices offered a more computationally efficient approach than reconstructing them, improving system performance.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references operate in the same field of 3D medical imaging, use similar source data (e.g., CT scans), and address the common goal of analyzing 3D medical data. The combination was presented as a predictable integration of known techniques.

Ground 2: Obviousness of Claim 7 over Getty, Tomoda, and Deering

• Prior Art Relied Upon: Getty (Application # 2009/0147073), Tomoda (Application # 2004/0059214), and Deering (Patent 5,287,437).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the GTC combination by adding the teachings of Deering. Deering disclosed a stereo display system that used head and eye-tracking technology (via shutter glasses with ultrasonic receivers) to acquire information on the direction of a viewer's gaze. This information was used to compute and display stereo images focused where the viewer's eyes would naturally converge. Petitioner argued that incorporating Deering's eye-tracking would allow the GTC system to converge the focus of a set of eyes at a center point of the 3D cursor, as required by claim 7. The ROI selected by the 3D cursor would correspond to a "hot spot" in Deering where the viewer's gaze is likely directed.
  • Motivation to Combine: A POSITA would combine Deering with GTC to create a more realistic and intuitive visual experience. By modifying the displayed 3D image based on the viewer's head and eye movements, the system would more closely reflect how objects are perceived in the real world. This enhanced realism would be beneficial for medical applications like surgical training and planning.
  • Expectation of Success: The combination was argued to be predictable. Both Getty and Deering described stereoscopic display systems, and incorporating Deering's established head and eye-tracking techniques into the GTC system would have been a straightforward software update to improve its user interface.

Ground 3: Obviousness of Claims 16-19 over Getty, Tomoda, and Cevidanes

• Prior Art Relied Upon: Getty (Application # 2009/0147073), Tomoda (Application # 2004/0059214), and Cevidanes (a 2006 journal article on 3D imaging in orthodontics).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground added Cevidanes to the GTC combination to address claims related to comparing images over time. Cevidanes taught methods for registering and superimposing 3D CT images taken at different time points (e.g., pre- and post-surgery) to assess changes. The method involved voxel-wise registration and comparison of grey-level intensity to highlight differences, which could be displayed using color-coding. Petitioner asserted this taught registering volumes from subsequent imaging sessions (claim 16), superimposing a newly acquired volume over a previously acquired one (claim 17), and invoking image processing like subtraction and highlighting changes on the superimposed images (claim 18).
  • Motivation to Combine: A POSITA would be motivated to integrate Cevidanes's methods into the GTC system to facilitate longitudinal analysis of patient anatomy. This would allow a doctor to use Getty's 3D cursor to select the same ROI in pre- and post-treatment scans and then use Cevidanes's techniques to automatically register, superimpose, and visualize the changes, thereby improving diagnosis, treatment planning, and outcome assessment.
  • Expectation of Success: The combination was presented as a foreseeable integration of complementary technologies. A POSITA could implement Cevidanes's image analysis software into the GTC system to add powerful analytical capabilities, yielding predictable and beneficial results for medical professionals.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations with Betting (Patent 7,242,402) for removing tissue outside the cursor; Traughber (Application # 2015/0110374) for counting voxels of specific tissue densities; Schoolman (Patent 5,488,952) for using a head-mounted display; Shimotani (Application # 2013/0076876) for displaying cardinal directions; and Zhou (Application # 2016/0129637) for constructing a custom object for 3D printing.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate. The petition asserted that the co-pending litigation was in its early stages, with no depositions taken, no expert discovery, and no Markman hearing held. Petitioner contended that its diligence in filing the petition well before the one-year bar date, the minimal investment in the parallel litigation, and a stipulation not to pursue the same grounds in district court all weighed against denial. Finally, Petitioner argued that the strong merits of the petition, which relied on prior art not considered during prosecution, favored institution to promote judicial efficiency and remove an invalid patent.

5. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-4, 6-9, and 11-21 of the ’691 patent as unpatentable under 35 U.S.C. §103.