Matterport Inc v. Appliance Computing III Inc

1. Case Identification

• Case #: IPR2021-00938
• Patent #: 10,592,973
• Filed: May 13, 2021
• Petitioner(s): Matterport, Inc.
• Patent Owner(s): Appliance Computing III, Inc.
• Challenged Claims: 1-23

2. Patent Overview

• Title: Image-Based Rendering of Real Spaces
• Brief Description: The ’973 patent is directed to systems and methods for rendering three-dimensional (3D) models of real estate spaces. The technology facilitates 3D image-based virtual tours through a user interface that provides multiple viewpoints and navigation tools.

3. Grounds for Unpatentability

Ground 1: Claims 1-23 are obvious over Cowtan in view of Bell436

• Prior Art Relied Upon: Cowtan (Application # 2009/0031246) and Bell436 (Application # 2014/0043436).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Cowtan and Bell436 taught all limitations of the challenged claims. Cowtan was asserted to disclose a web-based framework for providing virtual tours of real estate, including a dual-paned user interface with a main image display and a navigation section containing interactive 2D floorplans, maps, and selectable viewpoints. Cowtan thus provided the overall system architecture for a real estate virtual tour. Bell436, which was assigned to the Petitioner, was argued to teach the underlying technical methods for generating the 3D content. Specifically, Bell436 disclosed capturing images and data from multiple locations within a space and processing that data to reconstruct a 3D composite scene, such as a point cloud or mesh. Petitioner contended that Bell436’s methods for creating 3D models, including navigable panoramas and synthesized views from virtual camera perspectives, would have been a known and obvious technique to implement the 3D visualizations and tours described functionally in Cowtan. The combination, therefore, allegedly met the core limitations of independent claims 1 and 18, which require obtaining views, defining spatial boundaries, creating synthesized views, and presenting a virtual model on a user interface with map and text elements. Dependent claims were argued to add only minor, well-known features also taught by the combination, such as using specific types of image-based rendering, generating spherical panoramas, or adding user navigation controls.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA), seeking to implement the virtual real estate tour system of Cowtan, would have been motivated to use known 3D reconstruction techniques like those in Bell436. Cowtan provided the high-level concept and user interface for a 3D tour, and Bell436 provided a known, practical method for generating the necessary 3D data from captured images. Petitioner highlighted that the inventors of the ’973 patent themselves acknowledged in a provisional application that the technology disclosed in Bell436 (Matterport's system) was a pre-existing "commercial example of IBR [image-based rendering] with explicit geometry." This acknowledgment demonstrated that using Bell436's technology for creating 3D models of indoor environments for real estate was known in the art.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The combination involved applying the known 3D data capture and processing methods of Bell436 to populate the established web-based virtual tour framework of Cowtan. Both references describe using standard computing and web technologies, and the integration was argued to be a predictable application of known techniques to achieve a known result.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §325(d) or §314(a).
• §325(d): Petitioner contended that although Cowtan and Bell436 were cited on an Information Disclosure Statement (IDS) during prosecution, the Examiner never used them in any rejection. Therefore, the arguments presented in the petition were new and had not been substantively considered by the USPTO.
• §314(a) (Fintiv Factors): Petitioner argued the Fintiv factors weighed against discretionary denial based on a parallel district court litigation. Key arguments included:
  • The district court trial date was nearly 18 months away and highly uncertain due to pandemic-related delays, making it unlikely to occur before a Final Written Decision (FWD).
  • The investment in the parallel case was minimal, with discovery still pending.
  • Critically, Petitioner was not a party to the parallel litigation (which involved Redfin Corporation), and Redfin had agreed to stipulate not to pursue the same invalidity grounds in district court if the IPR was instituted, mitigating concerns of duplicative efforts.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-23 of Patent 10,592,973 as unpatentable.