Case: 23-1462 Document: 36 Page: 1 Filed: 04/03/2024
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`D3D TECHNOLOGIES, INC.,
`Appellant
`
`v.
`
`MICROSOFT CORPORATION,
`Appellee
`______________________
`
`2023-1462
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2021-
`00878.
`
`______________________
`
`Decided: April 3, 2024
`______________________
`
`TAREK N. FAHMI, Ascenda Law Group, PC, San Jose,
`CA, argued for appellant.
`
` SARAH JACK, Fish & Richardson P.C., Minneapolis,
`MN, argued for appellee. Also represented by, NITIKA
`GUPTA FIORELLA, Wilmington, DE; AAMIR ABDULQADER
`KAZI, Atlanta, GA; BETTY H. CHEN, Desmarais LLP, San
`Francisco, CA.
` ______________________
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`D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
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`Before PROST, SCHALL, and REYNA, Circuit Judges.
`SCHALL, Circuit Judge.
`D3D Technologies, Inc. (“D3D”) owns U.S. Patent No.
`9,980,691 (“the ’691 patent”), which is at issue in D3D
`Technologies, Inc. v. Microsoft Corp., 6:20-cv-01699 (M.D.
`Fla). In this appeal, D3D challenges the Final Written De-
`cision (“FWD”) of the Patent Trial and Appeal Board
`(“Board”) in an inter partes review proceeding initiated by
`petitioner Microsoft Corporation (“Microsoft”). In the
`FWD, the Board found claims 1–9 and 11–21 of the ’691
`patent rendered obvious by the prior art combination of
`U.S. Patent Publication No. 2006/0279569 (“Acosta”) and
`U.S. Patent Publication No. 2004/0059214 (“Tomoda”). Mi-
`crosoft Corp. v. D3D Techs., Inc., IPR2021-00878, 2022 WL
`17254077 (P.T.A.B. Nov. 28, 2022) (“Final Written Deci-
`sion”). For the reasons stated below, we affirm.
`BACKGROUND
`I
`The ’691 patent relates to methods for providing three-
`dimensional (or “3D”) viewing of images. The patent de-
`scribes combining image “slices” (i.e., two-dimensional (or
`“2D”) images) generated by medical imaging devices such
`as CT (Computed Tomography), MRI (Magnetic Resonance
`Imaging), and PET (Positron Emission Tomography) to cre-
`ate a “volume of interest.” ’691 patent col. 2 ll. 43–46, col.
`5 ll. 8–10, 21–43. The volume of interest is presented in a
`three-dimensional representation to a display unit worn on
`a user’s head. Id. col. 2 ll. 46–48, col. 5 ll. 10–13, 36–60.
`The ’691 patent also describes the generation and dis-
`play of a movable three-dimensional cursor within the
`three-dimensional image space. Id. col. 17 ll. 14–20, 36–
`41. In a medical setting, for example, this allows a user to
`subtract from view tissue falling outside the cursor or to
`rotate the cursor to permit examination of the volume of
`interest from different angles. Id. col. 17 ll. 36–57.
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`II
`As noted, the Board found claims 1–9 and 11–21 of the
`’691 patent obvious in view of Acosta and Tomoda. Acosta
`describes a system and method for analyzing and imaging
`three-dimensional volume data sets using a “3D sampling
`probe” that “corresponds to a sub-volume of a larger 3D vol-
`ume.” J.A. 1505 Abstract, J.A. 1506 figs. 1–2, J.A. 1526
`¶ 59, J.A. 1528 ¶ 83. Acosta primarily discusses use of its
`system and method for manipulating seismic data, but also
`explains that they can be used “for analyzing and imaging
`in the medical field, where the datavalue element of the
`voxel is obtained from a CAT (computerized axial tomogra-
`phy) scanner or a magnetic resonance imaging (MRI) pro-
`cedure.” J.A. 1526 ¶ 54; see also id. ¶¶ 51–53.1
`Tomoda describes an apparatus and method for pro-
`cessing a plurality of images using a three-dimensional re-
`gion of interest (“ROI”) specifying unit. J.A. 1417 Title,
`¶¶ 10–13, J.A. 1421 ¶ 72, J.A. 1412–14 figs. 9–11. In one
`embodiment of Tomoda’s process, three-dimensional image
`data is obtained, two-dimensional images are produced
`from the three-dimensional image data, and then a spher-
`ical three-dimensional ROI is placed and located in the
`two-dimensional images. J.A. 1421 ¶¶ 71–72. At that
`point, one or more sections of the original three-dimen-
`sional image that cross the specified ROI are searched, and
`their sectional images are displayed. J.A. 1420 ¶ 55, J.A.
`1421 ¶¶ 72–73, J.A. 1414–15 figs. 11–12.
`III
`The parties assert, and we agree, that for purposes of
`this appeal independent claim 1 of the ’691 patent is repre-
`sentative. Claim 1 pertains to displaying a three-
`
`1 A “voxel” is a volume element within a 3D volume
`data set. See J.A. 1523 ¶ 6, J.A. 1526 ¶ 51; ’691 patent col.
`13 ll. 55–65.
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`D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
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`dimensional cursor in the volume of interest and then se-
`lecting portions of the two-dimensional image slices corre-
`sponding to the cursor’s volume for further processing. It
`provides as follows:
`1. A method comprising:
`[a] generating a three-dimensional image space or
`volume from a plurality of two-dimensional radio-
`logical image slices;
`[b] generating a three-dimensional cursor that has
`a non-zero volume;
`[c] displaying the three-dimensional cursor in the
`three-dimensional medical image space or volume;
`[d] responsive to a first input, moving said three-
`dimensional cursor within the three-dimensional
`medical image space or volume; and
`[e] responsive to a second input, selecting portions
`of the two-dimensional radiological image slices
`corresponding to the volume of the three-dimen-
`sional cursor for further processing.
`’691 patent col. 22 ll. 49–63.
`The Board found elements [a]–[d] of claim 1 to be
`taught by Acosta. Final Written Decision, 2022 WL
`17254077, at *17–19. On appeal D3D does not challenge
`those findings. That leaves only element [e] of claim 1 at
`issue.
`As seen, in relevant part element 1[e] recites “selecting
`portions of the two-dimensional radiological image slices
`corresponding to the volume of the three-dimensional cur-
`sor for further processing.” Microsoft’s petition asserted
`that the combination of Acosta and Tomoda, which it refer-
`enced as “ATC,” J.A. 185, taught this limitation, J.A. 198–
`99. Specifically, the petition stated that “ATC renders [1e]
`obvious . . . because Acosta’s 3D sampling probe would
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`have been used to select the ROI in response to an input,
`and Tomoda’s method would have been used to select por-
`tions of the original 2D radiological slices corresponding to
`the volume of [Acosta’s] 3D cursor for further processing,
`e.g., displaying.” J.A. 194; see also J.A. 57, 185. In its Pa-
`tent Owner Response, D3D contended that, in the petition,
`Microsoft “effectively admits that Acosta fails to teach se-
`lection of portions of two-dimensional radiological image
`slices corresponding to the volume of the three-dimensional
`cursor for further processing.” J.A. 517. Instead, D3D ar-
`gued, Microsoft relied solely on Tomoda as teaching that
`part of claim element 1[e]. Id. D3D further argued that
`Tomoda describes the selection of entire two-dimensional
`image slices that correspond to the ROI, not the selection
`of portions of the image slices corresponding to the volume
`of the three-dimensional cursor, as required by element
`1[e]. J.A. 517–29.
`In the FWD, the Board construed as follows the lan-
`guage in element 1[e] that recites “selecting portions of the
`two-dimensional radiological image slices corresponding to
`the volume of the three-dimensional cursor for further pro-
`cessing”:
`(1) the term “corresponding” means “to match or
`have a close similarity;” and (2) the phrase “select-
`ing portions” is limited in two respects, specifically,
`first that the selected portions are “of the two-di-
`mensional radiological image slices” and second
`that the selected portions must be corresponding to
`the volume of the three-dimensional cursor; and
`(3) the phrase “for further processing” is an in-
`tended use that has no patentable weight.
`Final Written Decision, 2022 WL 17254077, at *8.
`The Board then set forth Microsoft’s argument that the
`combination of Acosta and Tomoda teaches element 1[e],
`id. at *19–20, 21–22, and D3D’s arguments to the contrary,
`id. at *20–21, 22.
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`D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
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`Proceeding to its analysis, the Board concluded that
`Microsoft’s arguments and the testimony of its expert Dr.
`Fuchs relating to Acosta’s teachings of “selecting,” as well
`as Tomoda’s teachings relating to the specified ROI,
`showed that “the combination of Acosta and Tomoda
`teaches ‘selecting portions of the two-dimensional radiolog-
`ical image slices corresponding to the volume of the three-
`dimensional cursor’ using the correct construction of ‘cor-
`responding.’” Id. at *22. Having stated that the combina-
`tion of Acosta and Tomoda taught limitation 1[e], the
`Board next explained its reasoning. See id. at *22–27. In
`its explanation the Board made clear that it found that
`Acosta teaches the “selecting of portions of two-dimen-
`sional radiological slices corresponding to the volume of the
`three-dimensional cursor,” while Tomoda teaches the re-
`quired “for further processing,” to the extent the latter
`phrase is given patentable weight. See id. at *22–25 (rely-
`ing on Acosta’s teaching of a 3D sampling probe that can
`be placed at a ROI within the 3D volume data set as per-
`forming the claimed “selecting”), id. at *29 (noting that, to
`the extent the “for further processing” phrase is given pa-
`tentable weight, Tomoda’s “displaying” teaches this claim
`element). On this basis, the Board found claims 1–9 and
`11–21 of the ’691 patent unpatentable as obvious in view of
`Acosta and Tomoda.
`
`DISCUSSION
`I
`We review the Board’s legal determinations de novo
`and its underlying factual determinations for substantial
`evidence. Koninklijke Philips N.V. v. Google LLC, 948 F.3d
`1330, 1335 (Fed. Cir. 2020). We review the Board’s process
`for compliance with the Administrative Procedure Act
`(“APA”) de novo, and we must set aside Board decisions if
`they are “arbitrary, capricious, an abuse of discretion, . . .
`otherwise not in accordance with law,” “in excess of statu-
`tory jurisdiction, authority, or limitations,” or “without
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`observance of procedure required by law.” 5 U.S.C. § 706;
`Sirona Dental Sys. GmbH v. Institut Straumann AG, 892
`F.3d 1349, 1352 (Fed. Cir. 2018).
`II
`On appeal, D3D argues that the Board violated the
`APA when it held claim 1 of the ’691 patent obvious in view
`of Acosta and Tomoda. In making this argument, D3D fo-
`cuses on the Board’s finding that Acosta alone teaches the
`“selecting” required by element 1[e]. According to D3D,
`this finding was based on a theory not set forth in Mi-
`crosoft’s petition, which should have guided the litigation,
`in line with SAS Institute Inc. v. Iancu, 138 S. Ct. 1348,
`1355 (2018). Specifically, D3D asserts that, as presented
`in the petition, Microsoft’s argument was that the combi-
`nation of Acosta and Tomoda, not Acosta alone, teaches
`claim element 1[e]. In that regard, D3D points, Appellant’s
`Br. 39, to the following statement in the petition: “ATC ren-
`ders [1e] obvious . . . because Acosta’s 3D sampling probe
`would have been used to select the ROI in response to an
`input, and Tomoda’s method would have been used to se-
`lect portions of the original 2D radiological slices corre-
`sponding to the volume of [Acosta’s] 3D cursor for further
`processing, e.g., displaying.” J.A. 194; see J.A. 57, 185.
`In response, Microsoft contends that the Board had dis-
`cretion to interpret the petition and properly read it to de-
`lineate arguments that both Acosta and Tomoda disclose
`the claimed methods. Appellee’s Br. 23 (citing J.A. 183
`(“Acosta and Tomoda disclose methods for viewing a 3D im-
`age and selecting regions/volume of interest (ROIs) in the
`3D image using a 3D cursor (e.g., Acosta’s 3D sampling
`probe, Tomoda’s 3D ROI.”)). As for Acosta’s teachings
`alone, Microsoft states that “[t]he same portions of the pe-
`tition that establish how Acosta’s probe ‘selects’ also estab-
`lish
`that
`such
`selecting
`results
`in a
`selection
`‘corresponding’ to the probe, as the Board construed the
`term.” Id. at 22.
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`D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
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`III
`IPR proceedings are formal administrative adjudica-
`tions subject to the procedural requirements of the APA.
`Arthrex, Inc. v. Smith & Nephew, Inc., 935 F.3d 1319, 1326
`(Fed. Cir. 2019) (citations omitted). As seen, D3D argues
`that the Board’s reliance on Acosta alone with respect to
`the “selecting” part of claim element 1[e] amounted to an
`APA violation. We have stated that an APA violation oc-
`curs when the Board “depart[s] markedly from the evi-
`dence and theories presented by the petition or institution
`decision, creating unfair surprise.” Arthrex, 935 F.3d at
`1328.2 We affirm the Board’s decision because we conclude
`that such a violation did not occur here.
`
`
`2 Microsoft argues that we should review the Board’s
`interpretation of the petition for abuse of discretion. The
`cases Microsoft points to, however, dealt with the situation
`where we were reviewing the Board’s compliance with its
`own procedures, e.g., where the Board was reviewing a pe-
`tition in the context of 37 C.F.R. § 42.23(b), which permits
`the Board to strike arguments not responsive to ones pre-
`sented in the patent owner’s response or the institution de-
`cision, or in the context of 37 C.F.R. §§ 42.22(a)(2) and
`42.104, pertaining to what a petitioner must provide in the
`petition. See Appellee’s Br. 20; Ericsson Inc. v. Intell. Ven-
`tures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018) (consid-
`ering whether the Board abused its discretion in the
`context of § 42.23(b)); MModal LLC v. Nuance Commc’ns,
`Inc., 846 F. App’x 900, 906–07 (Fed. Cir. 2021) (reviewing
`for abuse of discretion the Board’s decision finding a peti-
`tion to be inadequate under §§ 42.22 and 42.104); see also
`Corephotonics, Ltd. v. Apple, Inc., 84 F.4th 990, 1008 (Fed.
`Cir. 2023) (explaining that we review de novo whether a
`reply brief presents a new theory of unpatentability, but
`that we review for abuse of discretion whether a reply brief
`properly responds to arguments pursuant to § 42.23(b)).
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`We begin with a close examination of Microsoft’s peti-
`tion. The petition’s analysis for element 1[e] first incorpo-
`rates its analysis for the other elements of claim 1. J.A.
`194 (“For the reasons noted above in Section III.A.3, ATC
`renders [1]e obvious . . .). The petition then explains that
`Acosta teaches a “3D sampling probe [that] can be placed
`at a ROI within a 3D volume dataset.” Id. (citing J.A. 188–
`90 pertaining to claim element 1[b]). As previously stated
`in the petition, Acosta’s larger three-dimensional volume
`set is generated from two-dimensional image slices. J.A.
`175, 186–87 (corresponding to claim element 1[a]). The pe-
`tition also explains using user input (the “second input” of
`claim element 1[e]) regarding “a second location to move
`the 3D sampling probe to a ROI for which the user would
`like to view 2D image slices.” J.A. 194. The petition then
`goes on to state that a Volume Sampling Module in Acosta
`“extracts data from the data volume to draw an image of
`the intersection of the 3D sampling probe with the 3D vol-
`ume.” Id. (citing J.A. 1530 ¶¶ 102–04). In our view, this
`teaching of extracting data from the data volume formed of
`2D slices, and drawing an image of the intersection of the
`3D sampling probe with the 3D volume, corresponds to
`claim element 1[e]’s “selecting portions of the two-dimen-
`sional radiological image slices corresponding to the vol-
`ume of
`the
`three-dimensional cursor
`for
`further
`processing.”
`While it is true that the petition refers to Tomoda as
`teaching “selecting portions,” J.A. 194–98, we cannot say
`that it was a marked departure from the petition for the
`FWD to have relied on Acosta as teaching selecting por-
`tions. We say this for two reasons. First, as just described,
`the petition ties Acosta to “selecting portions of . . . two di-
`mensional radiological image slices.” And second, while
`the petition relies on both Acosta and Tomoda generally for
`element 1[e], it discussed Tomoda specifically in connection
`with the display of the selected slices, i.e., “for further pro-
`cessing.” J.A. 195. Moreover, the petition has a detailed
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`discussion of Acosta. That discussion provides a teaching
`of the claimed element, and the FWD relied upon the same
`paragraphs of Acosta as the petition in concluding that
`Acosta teaches “selecting that corresponds ‘to the volume
`of the three-dimensional cursor.’” Final Written Decision,
`2022 WL 17254077, at *23 (quoting J.A. 1530 ¶¶102, 104).
`For us to discern an APA violation, we must find more
`of a departure from the petition than we have here. See
`Arthrex, 935 F.3d at 1328 (finding no violation of the APA
`when “the Board properly relied on the same references,
`the same disclosures, and the same obviousness theories
`advanced by the petition and debated by the parties”). For
`example, we have concluded that there was a “marked de-
`parture” from the petition where the Board’s final claim
`construction changed significantly from the institution de-
`cision, where the Board mixed arguments from two differ-
`ent grounds of obviousness to create its own theory of
`unpatentability, and where the Board relied on different
`portions of the prior art than those provided in the petition.
`Id. (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1372–73, 1377 (Fed. Cir. 2016); SAS Inst. v. Comple-
`mentSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016), rev’d
`on other grounds sub nom. SAS Inst. Inc., 138 S. Ct. 1348;
`In re NuVasive, Inc., 841 F.3d 966, 971 (Fed. Cir. 2016)).
`We also have found the Board to have violated the APA
`when the patent owner did not receive adequate notice or
`opportunity to respond to an argument. Compare M&K
`Holdings, Inc. v. Samsung Elecs., 985 F.3d 1376, 1385 (Fed.
`Cir. 2021) (finding the Board had violated the APA because
`a patent owner was not put on notice that a reference would
`be used to anticipate a claim when the petition challenged
`the claim only for obviousness) and EmeraChem Holdings
`v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1352 (Fed.
`Cir. 2017) (finding an APA violation when a reference re-
`lied upon in the final written decision was not a part of the
`grounds for rejection of those claims in the petition or the
`institution decision) with Sirona Dental Sys. GmbH, 892
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`F.3d at 1356 (“Because the petition provided Sirona notice
`and opportunity to address the portions of [the prior art]
`relied on by the Board, the Board’s reliance on these por-
`tions of [the prior art] did not violate the APA and is not
`inconsistent with SAS.”). Although Microsoft’s petition
`spoke generally of a combination of Acosta and Tomoda, as
`seen, it did describe what Microsoft asserted was Acosta’s
`teaching of the “selecting” component of claim element 1[e].
`We thus cannot say D3D was not on notice of Microsoft’s
`argument, and it certainly had ample opportunity to re-
`spond to the argument.
`CONCLUSION
`For the foregoing reasons, the FWD is affirmed.3
`AFFIRMED
`COSTS
`
`No costs.
`
`
`
`
`3 We accordingly do not reach Microsoft’s alternative
`argument regarding the construction of “corresponding” as
`part of the Board’s construction of “selecting portions.”
`
`