PTAB

PGR2021-00067

Falkbuilt Ltd v. DIRTT Environmental Solutions Ltd

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Virtual Reality Immersion with an Architectural Design Software Application
  • Brief Description: The ’284 patent describes systems and methods for visualizing architectural designs in virtual reality (VR). The technology uses a VR module and position tracking sensors to display a three-dimensional view of a design, and purports to use a "bookmark" feature to associate a virtual position and view with a corresponding physical location and view direction, allowing a user to properly orient themselves within a physical space that corresponds to the virtual design.

3. Grounds for Unpatentability

Ground 1: Indefiniteness of Claims 2 and 3 under §112(b)

  • Core Argument for this Ground: Petitioner argued that claims 2 and 3 are invalid as indefinite under 35 U.S.C. §112(b). Dependent claim 2 recites limitations related to "the virtual reality headset"; however, its independent base, claim 1, provides no antecedent basis for this term. Claim 1 introduces a "virtual reality system," "virtual reality components," and a "virtual reality module," but never "a virtual reality headset." Petitioner contended that this lack of a clear antecedent makes it impossible for a person of ordinary skill in the art (POSITA) to determine the scope of the claim with reasonable certainty. The specification further complicates the issue by suggesting that any of the system, components, or module could comprise a headset, creating ambiguity rather than resolving it. As claim 3 depends from the indefinite claim 2, it is also invalid.

Ground 2: Obviousness over Shingu and Scranton - Claims 1-5, 8-12, and 15-17 are obvious over Shingu in view of Scranton.

  • Prior Art Relied Upon: Shingu (J. Shingu et al., “Camera Pose Navigation using Augmented Reality,” 2010 IEEE Symposium) and Scranton (Patent 9,367,950).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the combination of Scranton and Shingu teaches every limitation of the challenged claims. Scranton discloses systems for providing a VR experience to visualize 3D architectural designs (e.g., from CAD or BIM software) using a head-mounted display (HMD). It teaches user traversal through a virtual space and a "virtual space toggling" feature to quickly move between specified points. Shingu, which was not considered during prosecution, discloses an augmented reality (AR) system that helps users take pictures from a specific pose by creating a "view bookmark." This bookmark saves a camera's precise position and orientation relative to a physical object (e.g., a CAD model) and uses graphical overlays to guide the user back to that exact physical and virtual pose. Petitioner argued that Shingu's "view bookmark"—which explicitly links a physical position and view direction with a virtual one—directly teaches the core "bookmark" limitation that was the basis for the patent's allowance. The combination of Scranton's architectural VR context and Shingu's bookmarking and user-orientation method renders independent claim 1 obvious.
    • Motivation to Combine: A POSITA would combine Shingu's AR bookmarking technology with Scranton's VR architectural visualization system to enhance functionality. The motivation would be to provide a user with a precise method for orienting themselves within a physical space (like a construction site) relative to a virtual architectural design. This would solve the known problem of aligning real and virtual worlds, allowing for accurate design previews, navigation without physical collision, and tracking changes over time, which aligns with Shingu’s stated purpose of facilitating repeat photography for comparison.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination. Both references operate in the well-established fields of AR/VR, computer graphics, and pose estimation. Integrating a pose-saving feature (Shingu) into a VR visualization platform (Scranton) would involve applying known programming techniques and would have yielded the predictable result of a more robust and accurately oriented architectural VR system.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §324(a) and the Fintiv factors is unwarranted. A co-pending district court case exists, but the court had not yet issued a scheduling order or set a trial date, indicating minimal investment by the court and parties.
  • Crucially, Petitioner highlighted that the Patent Owner asserted assignor estoppel in the parallel litigation. If the court agrees, Petitioner would be barred from challenging the patent's validity in that forum. Therefore, this Post-Grant Review (PGR) proceeding may be the only available avenue for Petitioner to challenge the validity of the ’284 patent, presenting a unique circumstance that strongly counsels against discretionary denial.
  • Petitioner also argued against denial under §325(d), as the primary prior art references, Shingu and Scranton, were never presented to or considered by the Examiner during the original prosecution.

5. Relief Requested

  • Petitioner requests institution of a PGR and cancellation of claims 1-5, 8-12, and 15-17 of the ’284 patent as unpatentable.