Click to edit Master title style
`
`1
`
`MEDIVIS, INC. V. NOVARAD CORP.
`IPR2023-00042
`U.S. PAT. NO. 11,004,271
`
`Kia Freeman
`Representing Petitioner
`
`McCarter & English
`
`January 30, 2024
`
`
`
`1
`
`MEDIVIS, INC. V. NOVARAD CORP.
`IPR2023-00042
`U.S. PAT. NO. 11,004,271
`
`Kia Freeman
`Representing Petitioner
`
`McCarter & English
`
`January 30, 2024
`
`
`
`2
`
`THE IPR2023-00042 TRIAL RECORD
`• “A motion to exclude evidence must be filed to preserve
`any objection.” (37 CFR § 42.64(c)).
`• Novarad waived all of its objections to Medivis’s exhibits
`(i.e., Exhibits 1001-1028) by not moving to exclude any
`Medivis evidence.
`• Medivis’s motion to exclude Novarad’s Exhibits 2002 and
`2004 (i.e., Mulumudi and Rosenberg declarations)
`is
`pending.
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`3
`
`Claims
`1, 5, 6
`
`1*-6,
`11*-20
`1-6,
`11-20
`
`SCOPE OF CHALLENGES
`Grounds
`Anticipation by Doo
`(Ex. 1008)
`Obviousness over Doo in view of Amira
`(Exs. 1008 & 1005)
`Obviousness over Chen, 3D Slicer-Visualization,
`and 3D Slicer-GUI
`(Exs. 1009, 1007, & 1010)
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`4
`
`Obviousness
`Obviousness must be assessed on the basis of factual inquiries:
`(i) the scope and content of the prior art,
`(ii) differences between the claimed subject matter and the
`prior art,
`(iii)the level of skill in the art, and
`(iv)objective evidence of nonobviousness.
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966); POR, 35.
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`5
`
`POSA in this IPR (1 of 5)
`A person of ordinary skill in the art (POSA) would have had three
`qualifications:
`(Pet., 10 (citing Ex. 1012, ¶ 25)).
`[1] a bachelor’s degree in computer science, electrical engineering, or
`a related field with
`[2] several years of experience in the design, development, and study
`of augmented reality [AR] devices and
`[3] either (a) familiar[ity] with conventional medical imaging data and
`visualization of data for medical procedures or (b) working with a
`team including someone with such familiarity.
`Novarad waived the right to dispute Medivis’s definition of a POSA.
`Scheduling Order, 8 (Board cautioning Novarad about waiver); Reply, 1-2; MTE.
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`6
`
`POSA in this IPR (2 of 5)
`• Kazanzides has necessary credentials to opine on the
`understanding of a POSA (Ex. 1012, ¶¶ 2-13; Ex. 1013,
`CV; Pet., 9-10).
`• Novarad did not dispute that Kazanzides qualifies as a
`POSA
`• Research Professor in Department of Computer Science
`at Johns Hopkins University.
`• Researches augmented reality systems for surgical
`applications
`• Co-inventor of USPN 11,244,508, entitled “Augmented
`Reality Display for Surgical Procedures”
`
`Demonstrative Exhibit -- Not Evidence
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Peter Kazanzides, Ph.D.
`
`
`
`POSA in this IPR (3 of 5)
`Example co-authored paper: Augmented Reality Goggles with
`an Integrated Tracking Systems for Navigation in
`Neurosurgery (March 2012) (Ex. 1011, Azimi et al.; Pet., 24).
`
`7
`
`Peter Kazanzides, Ph.D.
`
`Demonstrative Exhibit -- Not Evidence
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`8
`
`POSA in this IPR (4 of 5)
`Novarad did not qualify Mulumudi as a POSA: (Reply, 1-2; MTE, 10-12; MReply, 3-5)
`o Mulumudi lacks both the academic qualification and AR device
`experience required by undisputed POSA definition
`o Although Petition asserted “[a] POSA would have been familiar with
`the 3D Slicer application and its ability to load and display data for a
`user.” (Pet., 17), Mulumudi was not familiar with 3D Slicer (Ex.
`1022, 130:6-9, 131:3-6, 131:7-10).
`o Mulumudi did not recognize 3D Slicer-Visualization (i.e., Ex. 1007).
`(Ex. 1022, 150:10-21).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`9
`
`POSA in this IPR (5 of 5)
`Novarad did not qualify Rosenberg as a POSA: (Reply, 1-2; MTE, 12-15; MReply, 5)
`o Rosenberg admitted he is “not an expert in the specifics of medical
`imaging.” (Ex. 2004, ¶ 79).
`o Rosenberg did not claim the required qualification as to
`conventional medical imaging data and visualization of data for
`medical procedures
`o Rosenberg did not claim the required experience with AR devices
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`10
`
`Obviousness
`Obviousness must be assessed on the basis of factual inquiries:
`(i) the scope and content of the prior art,
`(ii) differences between the claimed subject matter and the
`prior art,
`(iii)the level of skill in the art, and
`(iv)objective evidence of nonobviousness.
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966); POR, 35.
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`11
`
`Admitted Prior Art
`• “[C]onventional medical imaging systems may create three-
`dimensional (3D) data for a patient” (Pet., 4-5; Ex. 1001, 2:49-51)
`• “[C]onventional AR systems” (Pet., 5; Ex. 1001, 17:11-16)
`• “[T]he AR headset may be any computer system in the form of an AR
`headset that is capable of augmenting real-time views of the patient
`with 3D data” (Pet., 5; Ex. 1001, 4:39-42)
`• “[T]he AR head set may be a modified version of the Microsoft
`HoloLens” (Pet., 5; Ex. 1001, 4:60-61)
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`12
`
`Amira (Ex. 1005)
`Amira is a user guide that was publically available before 2017.
`• Amira is copyrighted “1999-2009”
`•
`IBM Corp. v. Intellectual Ventures II LLC, IPR2014-00681, Paper 11, 18-19
`(October 30, 2014) (copyright date can support a threshold showing that a
`document was an available printed publication)
`•
`(Ex. 1005, 4; Reply, 19).
`• Amira was available on the internet by 2012.
`•
`Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374-75 (Fed. Cir. 2021)
`(Wayback Machine® prima facie evidence of public availability).
`(Ex. 1024, ¶¶ 5-6, 4-406; Reply, 19).
`
`•
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`Chen (Ex. 1009)
`Chen is an article that was publically available before 2017.
`• Chen was copyrighted and printed in 2015
`(Ex. 1009, 1; Ex. 1028, ¶¶ 6-14, 16 ; Reply, 27).
`• Chen had been cited by seven publication by January 2017.
`(Ex. 1028, ¶ 15 ; Reply, 27).
`
`13
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`14
`
`3D Slicer-Visualization (Ex. 1007)
`3D Slicer-Visualization (aka 3D Visualization) is a training PPT that was
`publically available before 2017.
`• 3D Slicer-Visualization is copyrighted “2012-2104,” and was
`available on the internet by September 2014.
`(Ex. 1007, 2-2; Ex. 1019; Ex. 1024, ¶¶ 25-29; Reply, 28).
`• 3D Slicer-Visualization was written to help people use 3D Slicer.
`(Ex. 1007, 1-2, 7-8, 14-15, 20-46-47, 98-103; Ex. 1021, ¶¶ 11-23; Reply, 27-28).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`3D Slicer-GUI (Ex. 1010)
`3D Slicer-GUI (aka 3D Slicer) is GUI documentation for 3D Slicer that
`was publically available before 2017.
`• 3D Slicer-GUI was “last edited on 7 November 2016, at 08:06.”
`(Ex. 1010, 7; Reply, 28).
`• Kazanzides opined that 3D Slicer-GUI is documentation that became
`available on November 8, 2016.
`
`15
`
`(Ex. 1021, ¶¶ 34-40 ; Reply, 28).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`16
`
`Obviousness
`Obviousness must be assessed on the basis of factual inquiries:
`(i) the scope and content of the prior art,
`(ii) differences between the claimed subject matter and the
`prior art,
`(iii)the level of skill in the art, and
`(iv)objective evidence of nonobviousness.
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966); POR, 35.
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`17
`
`CLAIM 1
`1. [1pre] A method for augmenting real-time, non-image actual views
`of a patient with three-dimensional (3D) data, the method comprising:
`[1a] identifying 3D data for the patient, the 3D data including an outer
`layer of the patient and multiple inner layers of the patient; and
`[1b] displaying, in an augmented reality (AR) headset, one of the inner
`layers of the patient from the 3D data projected onto real-time,
`non-image actual views of the outer layer of the patient,
`[1c] the projected inner layer of the patient from the 3D data
`being confined within a volume of a virtual 3D shape.
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`CLAIM 11
`
`18
`
`11. [1pre] A method for augmenting real-time, non-image actual views of a patient with three-dimensional (3D)
`data, the method comprising:
`[1a] identifying 3D data for the patient, the 3D data including an outer layer of the patient and multiple inner layers
`of the patient,
`the multiple inner layers of the patient having an original color
`gradient;
`altering the original color gradient of the multiple inner layers to be lighter
`than the original color gradient in order to be better visible when
`projected onto real-time, non-image actual views of the outer layer of
`the patient; and
`[1b] displaying, in an augmented reality (AR) headset, one of the inner layers of the patient from the 3D data
`projected onto real-time, non-image actual views of the outer layer of the patient,
`the projected inner layer of the patient from the 3D data being having
`the altered color gradient.
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`19
`
`CLAIM CONSTRUCTION
`• Novarad originally took the position that no claim construction is
`necessary:
`“Novarad asserts that all of the claim terms in the asserted
`patents should be given their plain and ordinary meaning as
`understood by one having ordinary skill in the art. Therefore,
`no court claim construction is necessary.”
`(Ex. 1014, Novarad email to Medivis relating to stayed litigation;
`Pet., 11).
`
`• After institution, Novarad proposed unordinary meanings that
`contradict the ‘271 Patent claims and the specification.
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`20
`
`CLAIM CONSTRUCTION ISSUES (1 of 2)
`• Must “3D data” both (a) exclude X-ray imaging and (b) be limited to
`data that has been “direct volume rendered” (DVR)? Is so, what does
`DVR mean?
`• Must “inner layer of the patient” be limited to (a) 3D and (b) DVR? Is
`so, what does 3D and DVR mean?
`• Does Claim 1’s “confined within a volume of a virtual 3D shape”:
`(a) require a tool for navigation along any axis? and
`(b) require a shape created by DVR?
`• Does “3D” have the same meaning in Claim 1’s “3D data” and “virtual
`3D shape”? What does “3D” mean?
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`CLAIM CONSTRUCTION ISSUES (2 of 2)
`• Is the word “being” meaningless in Claim 11, but not in Claim 1
`• Can Novarad have the word “being” construed as meaningless,
`in Claim 11 only, without moving to amend or seeking a
`correction of its own error?
`
`21
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`22
`
`‘271 PATENT, FIGURE 1
`Patient 106, User 104, AR headset
`108 (may be Microsoft HolonLens)
`(Ex. 1001, 3:63-67, 4:60-61).
`
`“[V]irtual elements [shown in dashed
`lines] are generated by the AR
`headset 108 and only viewable by
`the user 104 through the AR headset
`108.” (Id., 4:5-7).
`
`Virtual user interface 114,
`Virtual spatial difference box 116,
`Bones 106b (Id., 4:1-8; 4:42-46).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`‘271 PATENT, FIG. 1
`
`23
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`‘271 PATENT, VIRTUAL USER INTERFACE 114
`“[V]irtual user interface 114 may … cause the AR headset 108 to:
`
`24
`
`… (
`
`3) adjust the characteristics of the 3D data that is projected onto the patient 106,
`such as the brightness and color of the projected 3D data,
`(4) adjust the alignment of the 3D data with the patient 106,
`(5) display the virtual spatial difference box 116,
`(6) display a slice of the 3D data instead of a volume of the 3D data,
`(7) drag the 3D data in a direction of the user 104, such as in the repositioning of
`a slice of the 3D data,
`(8) display different slices of the 3D data including, but not limited to, axial slices,
`coronal slices, sagittal slices, and oblique slices, ….”
`(Ex. 1001, 5:22-40; Reply, 11-12).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`25
`
`‘271 PATENT, EXEMPLARY METHOD
`“FIGS. 6A-6E are a flowchart of an example method of augmenting real-
`time views of a patient with 3D data.” (Ex. 1001, 2:38-39).
`Step 612: “Display one of the inner layers of the patient from the 3D
`data projected onto real-time views of outer layer of the patient.”
`Examples of Step 612 (Id., 13:11-34):
`• “AR headset 108 of FIG. 1 may display … the bones 106b of the
`patient 106 … projected onto real-time views of the skin 106a ….”
`• “CT scan image of the brain of the patient is projected onto the
`top of the head of the patient in FIGS. 2B and 2C, or onto the side
`of the head of the patient in FIG. 2E.”
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`‘271 PATENT, FIG. 1
`
`26
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`271 PATENT, FIGURE 2C
`
`27
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`271 PATENT, FIGURE 2E
`
`28
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`29
`
`CLAIM 1
`1. [1pre] A method for augmenting real-time, non-image actual views
`of a patient with three-dimensional (3D) data, the method comprising:
`[1a] identifying 3D data for the patient, the 3D data including an outer
`layer of the patient and multiple inner layers of the patient; and
`[1b] displaying, in an augmented reality (AR) headset, one of the inner
`layers of the patient from the 3D data projected onto real-time,
`non-image actual views of the outer layer of the patient,
`[1c] the projected inner layer of the patient from the 3D data
`being confined within a volume of a virtual 3D shape.
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`30
`
`CLAIM CONSTRUCTION: “3D DATA” (1 of 2)
`Medivis’s Construction
`Novarad’s Construction (POR, 5-6)
`“one or more of MRI images,
`“direct-volume-rendered CT, MRI, PET, and
`Computerized Tomography (CT) scan
`SPECT imaging (and also ultrasound and
`images, X-ray images, Positron
`fluorescence imaging, depending on the
`Emission Tomography (PET) images,
`methods used)”
`ultrasound images, fluorescence
`Novarad argues “direct-volume-rendering”
`images, Infrared Thermography (IRT)
`means a “non-feature-specific,
`images, and Single-Photon Emission
`unsegmented image of the entire volume
`Computer Tomography (SPECT) scan
`of the patient anatomy”
`image” (Pet., 11-13).
`No “direct-volume-rendering”
`limitation (Reply, 3-5).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`CLAIM CONSTRUCTION: “3D DATA” (2 of 2)
`Medivis’s Construction
`Novarad’s Construction (Sur-reply)
`Novarad argues “the 3D data of the challenged
`claims is not surface rendered nor segmented” (Sur-
`reply, 27; see also id., 25).
`
`31
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`32
`
`CLAIM CONSTRUCTION: “INNER LAYER OF THE PATIENT”
`Medivis’s Construction (Reply, 6-10)
`Novarad’s Construction (POR)
`Plain and ordinary meaning
`“A 3D direct volume rendering of the
`anatomy of the patient at a certain depth
`below the outer layer, or skin, of the
`patient”
`
`The features of a “3D direct volume
`rendering” identified by Novarad are
`inconsistent with preferred
`embodiments of the projected inner
`layer
`
`Novarad argues “3D” requires the
`combination of height, width, and depth
`
`Novarad argues “direct volume
`rendering” means a “non-feature-specific,
`unsegmented image of the entire volume
`of the patient anatomy”
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`33
`
`“3D DATA” (1 of 5)
`three-
`create
`“Conventional medical
`imagining
`systems may
`dimensional (3D) data for a patient and then display that 3D data as an
`image or images on a computer display.” (Ex. 1001, 2:49-51; Pet., 4-5).
`“3D data of the patient 106 may include, but is not limited to, MRI
`images, Computerized Tomography (CT) scan images, X-ray images,
`Positron Emission Tomography (PET)
`images, ultrasound images,
`fluorescence images, Infrared Thermography (IRT) images, and Single-
`Photon Emission Computer Tomography (SPECT) scan image, or some
`combination thereof.” (Id., 11:45-51 (emphasis added); Pet., 11).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`34
`
`“3D DATA” (2 of 5)
`Contrary to evidence, Novarad argues: “there is no dispute that 3D data
`has height, width, and depth.” (Sur-reply, 7).
`In fact, there is no dispute that 3D data is commonly stored as a series
`of 2D images.
`(Amira, Ex. 1005, 27/39; Mulumudi, Ex. 1022, 127:12-
`14; Kazanzides, Ex. 2006, 59:19-61:1).
`“Depending on context, [3D] has different meanings.” (Ex. 2006, Kazanzides,
`57:20-58:10; Reply, 5).
`“One meaning [of 3D] is that it has three coordinates, X, Y, and Z.” (Kazanzides,
`Ex. 2006, Kazanzides, 57:20-58:10; Reply, 5).
`Each slice in a stack of 2D slices may provide information “common to the slice”
`but “relative to the other slices.” (Kazanzides, Ex. 2006, 62:17-66:1 ; Reply, 5).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`“3D DATA” (3 of 5)
`“3D data for patient 106 may include a 2D X-ray image that may be
`projected onto … the patient 106.” (Ex. 1001, 12:7-9; Reply, 5).
`“3D data my include a 2D image, such as an X-ray image, because when
`the 2D image is projected into a 3D space the 2D image has 3D
`significance.” (Ex. 1001, 12:4-7 ; Reply, 5).
`
`35
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`36
`
`“3D DATA” (4 of 5)
`Novarad argues “the 3D data of the challenged claims is not surface
`rendered nor segmented.” (Sur-reply, 27).
`• Claim 1, 2d step: “displaying … one of the inner layers of the patient
`from the 3D data ….”
`• Step 612: “Display one of the inner layers of the patient from the 3D
`data ….”
`• First example: “AR headset 108 of FIG. 1 may display, at block 612,
`the bones 106b of the patient 106 from the 3D data projected
`onto real-time views of the skin 106a ….” (Ex. 1001, 13:27-31
`(emphasis added); Reply, 7-8).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`37
`
`“3D DATA” (5 of 5)
`Novarad argues “3D data is a 3D volume”
`(Sur-reply, 8; see also id., 16).
`Novarad argues “any lesser portion of a 3D volume is also 3D”
`(Sur-reply, 10).
`Novarad argues “while a user may ‘display a slice of 3D data instead of
`a volume of the 3D data,’ the 3D data [slice] is still three-dimensional”
`(Sur-reply, 7).
`‘271 Patent discloses “virtual user interface 114 may … cause the AR
`headset 108 to: … (6) display a slice of 3D data instead of a volume of
`3D data.”
`(Ex. 1001, 5:22-40 (emphasis added); Reply 11-12).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`38
`
`NO “DIRECT VOLUME RENDERING” REQUIRED
`• ‘271 Patent nowhere mentions “direct volume rendering” (DVR)
`• Novarad’s proffered expert Mulumudi testified he can only recognize
`DVR by the phrase “direct volume rendering”
`(Ex. 1022, 129:17-130:1; Reply, 3-4; MTE, 11-12).
`• Both Novarad and Mulumudi distinguish “3D data” and DVR:
`•
`“DVR is a method for visualizing medical imaging data ….”
`(POR, 5; Ex. 2002, ¶54).
`“DVR operates … on the original dataset”
`(POR, 6; Ex. 2002, ¶56).
`
`•
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`NO “DIRECT VOLUME RENDERING” REQUIRED
`Novarad argues: “The prior art only
`displays 2D images, stacks of 2D images,
`and 3D surface models.” (Sur-reply, 1).
`
`39
`
`Casas discloses displaying volume
`rendering:
`
`(Ex. 1006, ¶[0075]; Pet. 26).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`CLAIM CONSTRUCTION: “CONFINED WITHIN A VOLUME
`OF A VIRTUAL 3D SHAPE”
`Novarad’s Construction
`“confined within … a virtual 3D shape”
`means
`“navigated along any axis … a virtual
`control;”
`
`Medivis’s Construction
`“virtual 3D shape” encompasses a
`“virtual 3D shape (i.e., form) as simple as
`a box and as complex as the outer layer
`of a patient”
`
`40
`
`“confined within a volume of” has its
`plain and ordinary meaning, which does
`not involve any navigation function, but
`rather requires the virtual 3D shape to
`be a boundary
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`41
`
`CLAIM 3
`3. The method of claim 1, wherein:
`the virtual 3D shape is configured to be controlled to toggle
`between displaying and hiding lines of the virtual 3D shape; and
`the virtual 3D shape is configured to be controlled to reposition
`two-dimensional (2D) slices and/or 3D slices of the projected
`inner layer of the patient from the 3D data.
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`CLAIM CONSTRUCTION: “CONFINED WITHIN A VOLUME
`OF A VIRTUAL 3D SHAPE”
`Novarad’s proffered expert Mulumudi opined that the following
`terms are not technical:
`•
`“confined”
`•
`“shape” means form
`
`(Ex. 1022, 19:12-20:1; Reply, 10).
`
`(Ex. 1022, 17:5-18:13; Reply, 11).
`
`42
`
`Novarad argues the “virtual 3D shape” is a box:
`•
`“a virtual 3D shape, i.e., a virtual spatial difference box 116”
`(Sur-reply, 7).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`CLAIM CONSTRUCTION: “CONFINED WITHIN A VOLUME
`OF A VIRTUAL 3D SHAPE”
`Novarad wrongly argues “confined within a volume” means “navigable
`along any axis”? (Sur-reply, 12; see also id., 1).
`
`43
`
`The ‘271 patent claims do not include word “navigate.”
`
`The ‘271 patent specification only uses the word “navigate” once:
`“In some embodiments, the virtual spatial difference box 116 may
`also assist the user when navigating the projected 3D data by
`providing a frame of reference for the user 104.”
`(Ex. 1001, 6:11-13 (emphasis added)).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`44
`
`CLAIM CONSTRUCTION: “CONFINED WITHIN A VOLUME
`OF A VIRTUAL 3D SHAPE”
`According to Novarad, navigation along any axis excludes rotation:
`“Importantly, the repositioning function in claim 3 is not the same
`as merely rotating an object in space. See Ex. 2004, Ros.Dec., ¶174
`(“… the projected 3D data is not rotated because it’s registered to
`the patient.”).”
`(Sur-reply, 24 (emphasis added)).
`According to Rosenberg, navigation along any axis excludes navigation
`along any rotational axis:
`“‘[C]onfigure [sic] to be controlled to reposition … slices’ means
`‘navigating the projected 3D data’ by repositioning slices registered
`to the patient …—not rotation.”
`(Ex. 2006, ¶174 (emphasis added)).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`CLAIM CONSTRUCTION: “CONFINED WITHIN A VOLUME
`OF A VIRTUAL 3D SHAPE”
`“[V[irtual user interface 114 may … cause the AR headset 108 to:
`
`45
`
`…(
`
`4) adjust the alignment of the 3D data with the patient 106 …
`
`… (
`
`7) drag the 3D data in a direction of the user 104, such as in the
`repositioning of a slice of the 3D data,”
`(8) display different slices of the 3D data, ….”
`
`(‘271 Patent, 5:22-40 (emphasis added)).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`CLAIM CONSTRUCTION: “CONFINED WITHIN A VOLUME
`OF A VIRTUAL 3D SHAPE”
`According to Novarad, a “virtual 3D shape” is derived
`from DVRing:
`“The ‘virtual 3D shape’ is derived from
`direct volume rendering the detail of the
`object ….” (Opp., 8 (citing Mulumudi ¶78)).
`
`46
`
`“a virtual 3D shape, i.e., a virtual spatial
`difference box 116” (Sur-reply, 7).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`CLAIM CONSTRUCTION: “CONFINED WITHIN A VOLUME
`OF A VIRTUAL 3D SHAPE”
`
`47
`
`According to Novarad, 3D requires height, width, and depth:
`“based on the plain and ordinary meaning
`of the [sic] ‘three-dimensional (3D),’ a
`POSITA would understand that … in an AR
`environment [it] must at least appear to
`the user to have height, width, and
`depth.”
`
`(Opp., 14 (citing Rosenberg ¶79)).
`“a virtual 3D shape, i.e., a virtual spatial
`difference box 116”
`(Sur-reply, 7 (emphasis added)).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`CLAIM CONSTRUCTION: “BEING HAVING”
`Medivis’s Construction
`Novarad’s Construction
`“being or having”
`“having”
`
`48
`
`(i.e., “being” is meaningless)
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`49
`
`CLAIM 11
`11. [1pre] A method for augmenting real-time, non-image actual views of a patient with three-
`dimensional (3D) data, the method comprising:
`[1a] identifying 3D data for the patient, the 3D data including an outer layer of the patient and
`multiple inner layers of the patient,
`the multiple inner layers of the patient having an original color gradient;
`altering the original color gradient of the multiple inner layers to be lighter than
`the original color gradient in order to be better visible when projected onto
`real-time, non-image actual views of the outer layer of the patient; and
`[1b] displaying, in an augmented reality (AR) headset, one of the inner layers of the patient from the
`3D data projected onto real-time, non-image actual views of the outer layer of the patient,
`the projected inner layer of the patient from the 3D data being having the
`altered color gradient.
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`50
`
`“BEING HAVING” (1 of 2)
`Not a term of art (Ex. 1012, ¶34; Pet., 14).
`Kazanzides opined inclusion of “being having” in Claim 11
`appears to be an error, but did not opine as to the nature of
`the error. (Ex. 1012, ¶34; Pet., 14).
`Novarad did not move to amend
`Novarad did not solicit any correction
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`51
`
`“BEING HAVING” (2 of 2)
`Novarad admitted inclusion of “being having” in Claim 11
`was its own error. (Sur-reply, 12-13).
`“For purposes of this IPR, [Novarad] interprets ‘being
`having” as ‘having.’” (POR, 18).
`Novarad proposed to construe the word “being” as
`meaningless in Claim 11 (but not in Claim 1)—without
`explanation. (POR, 18; Sur-reply, 13).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`52
`
`Motive to Combine Doo & Amira
`Doo provides motive to combine its disclosure with Amira:
`• Novarad admits “Amira is [2009] software for displaying medical
`imaging.” (POR, 43-44).
`• “Doo disclosed ‘a need for an improved system in which the
`customary … medical images … are better managed so that a
`surgeon [need not] look away from the patient’ and has a lower
`cognitive load.” (Reply, 20 (citing Ex. 1008, [0010])).
`• “Doo suggests an improvement on conventional medical imaging
`displays, such as disclosed in Amira.” (Id.).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`Expectation of Success Combining Doo & Amira
`“POSA would have had a reasonable expectation of success in
`combining the intra-operative medical image viewing system and
`method disclosed in Doo with the visualization technology disclosed in
`Amira.”
`(Pet., 41-42 (citing Kazanzides, Ex. 1012, ¶103)).
`
`53
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`54
`
`Claim 1 Obvious over Doo and Amira
`Doo (Exhibit 1008)
`Intra-operative Medical Image
`Viewing System And Method
`(Ex. 1008, Title).
`“[T]he image 32 may appear
`(to the surgeon 26) to be …
`projected inside the patient’s
`body.” (Ex. 1008, [0039]).
`Board preliminarily found that
`Doo anticipates Claims 1, 5,
`and
`6
`(Decision Granting
`Institution, 7-12).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`Doo
`
`55
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`Doo
`
`56
`
`Figure 11 “is a series of three-dimensional
`tomographic slices of anatomical feature
`of a patient.” (Ex. 1008, ¶26; Pet., 38).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`57
`
`Doo
`“[M]edical image viewing system 34 can
`allow the surgeon 26 to maintain a
`viewing perspective on the patient 28
`while concurrently obtaining relevant
`image-based (i.e., pictorial) information
`about the patient 28 ….”
`“The display 30 can be selectively and/or
`variably transparent and configured to
`exhibit at least one medical image 32 to
`the surgeon 26 that is overlaid on the
`patient 28 ….”
`
`(Ex. 1008, ¶38).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`Claim 1 Obvious over Doo and Amira
`“[A]n intra-operative medical
`image viewing system 34 that maintains the
`registration of an image to an actual anatomical feature of the patient 28 despite
`head movement by the surgeon 26. The system 34 can allow the surgeon 26 to
`selectively register, i.e., lock, an image to an actual anatomical feature of the
`patient 28 …. For example, the image can be overlaid on the patient's actual
`anatomical feature and, …, the image can be sized to match the actual anatomical
`feature, thus creating the visual impression of a "true registration" and a form of
`augmented reality.”
`
`58
`
`“Initial placement of an image in preparation for registration can be established by
`the surgeon 26 communicating image control inputs to the system, resulting in
`image changes such as positioning, scaling, rotating, panning, tilting, and cropping.”
`
`(Ex. 1008, ¶37).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`59
`
`Claim 1 Obvious over Doo and Amira
`“The image 432 displayed to the surgeon
`26 can be rendered by the system as
`having been wrapped over the chest of
`the patient 28 yielding the appearance of
`a three-dimensional image.” (Ex. 1008,
`¶75).
`“A 3D shape has a volume.” (Opp., 15).
`“Doo’s Figure 7 … illustrates the
`projection of bones of the patient from
`the 3D data being confined with the
`volume of the virtual 3D shape …. ” (Ex.
`1012, ¶75; Pet., 37).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`60
`
`Claim 1 Obvious over Doo and Amira
`Figure 11 “is a series of three-dimensional
`tomographic slices of anatomical feature of
`a patient.” (Ex. 1008, [0026]; Pet., 36-37).
`“A fusion of several tomographic slices can
`be stitched together to create a 3D image.”
`(Ex. 1008, [0078]; Pet., 36-37).
`Figure 11 illustrates in part by dashed lines
`a virtual 3D shape in the form of a virtual
`box having top, bottom left, right, front, and
`back sides (Ex. 1012, ¶¶76-77; Pet., 38).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`Claim 1 Obvious over Doo and Amira
`Each of the inner layers is confined within a
`Figure 11’s virtual box illustrated in part by
`dashed lines (Ex. 1012, ¶¶76-77; Pet., 38).
`POSA would understand that any projected
`inner layer would be confined within a
`volume of a virtual 3D shape, whether the
`virtual 3D shape were displayed or not (Ex.
`1012, ¶¶76-77; Pet., 38).
`
`61
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`Claim 5 Obvious over Doo and Amira
`
`62
`
`‘271 Patent Claim 5: “The method of claim 1, wherein lines of the virtual
`3D shape are hidden.”
`“[T]he technique of hiding or showing the lines of a virtual 3D shape was
`well known.” (Ex. 1012, ¶¶42-47; Pet., 39).
`“[D]ashed lines in Doo’s Figure 7 … do not seem to be visible to the
`surgeon.” (Ex. 1012, ¶¶42-47; Pet., 39).
`“POSA would conclude that the lines of the virtual 3D shape illustrated in
`Doo’s Figure … 7 … are hidden.” (Ex. 1012, ¶¶42-47; Pet., 39).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`63
`
`Claim 6 Obvious over Doo and Amira
`‘271 Patent Claim 6: “One or more non-transitory computer-readable media storing one or
`more programs that are configured, when executed, to cause one or more processors to
`perform the method as recited in claim 1.”
`Doo discloses:
`• “System programming can be stored in and accessed from memory 72.”
`• “Any combination of one or more … computer-readable media may be
`utilized in various embodiments of the invention.”
`• “Computer program code for carrying out operations of this invention may
`be written in any combination of one or more programming languages.”
`(Ex. 1008, [0063], Ex. 1012, ¶79; Pet., 40).
`“POSA would understand that Doo discloses one or more non-transitory
`computer-readable media storing one or more programs that are configured,
`when executed, to cause one of more processors to perform the method
`recited in Claim 1.”
`(Ex. 1012, ¶79; Pet., 40).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`“CONFINED WITHIN A VOLUME OF A VIRTUAL 3D SHAPE”
`
`64
`
`Novarad argues the “virtual 3D shape” is a box:
`“a virtual 3D shape, i.e., a virtual spatial difference box 116”
`(Sur-reply, 7).
`Amira discloses virtual a virtual 3D bounding box that can be controlled
`to reposition slices
`(Ex. 1005, 28/40, 79/91-80/92; Pet., 42-45).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`65
`
`Claim 1 Obvious over Doo and Amira
`Amira (Exhibit 1005):
`Amira illustrates exemplary
`bounding boxes as yellow lines (Ex.
`1005, 36/48; Ex. 1012, ¶46; Pet., 22).
`Amira discloses a user may
`“[d]eactivate and activate the
`display of … BoundingBox module
`using the toggle viewer (Ex. 1005,
`25/37; Ex. 1012, ¶47; Pet., 22).
`Amira’s “3D viewer lets you look at
`the model from different positions.”
`(Ex. 1005, 23-24/35-36; Ex. 1012, ¶48; Pet., 23).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`Claim 1 Obvious over Doo and Amira
`
`66
`
`Like Doo, Amira “[o]perat[es] on 3D
`data.”
`(Ex. 1005, 11/23; Ex. 1012, ¶¶81-83; Pet., 42).
`Amira illustrates exemplary bones
`within skin within the yellow lines of
`a bounding box
`(Ex. 1005, 80/92; Ex. 1012, ¶83; Pet., 43).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`Claim 1 Obvious over Doo and Amira
`Amira discloses displaying direct volume
`rendering:
`“One of the most powerful techniques
`for visualizing 3D image data is
`direct volume rendering.”
`(Ex. 1005, 6/18-7/19 (emphasis original); MTE, 5-6).
`
`67
`
`(Reply, 3-4 (discussing Mulumudi’s testimony about
`Ex. 1005, Section 2.3.6 beginning on 37/49)).
`
`Demonstrative Exhibit -- Not Evidence
`
`
`
`68
`
`CLAIM 11
`11. [1pre] A method for augmenting real-time, non-image actual views of a patient with three-
`dimensional (3D) data, the method comprising:
`[1a] identifying 3D data for the patient, the 3D data including an outer layer of the patient and
`multiple inner layers of the patient,
`the multiple inner layers of the patient having an original color gradient;
`altering the original color gradient of the multiple inner layers to be lighter than
`the original color gradient in order to be better visible when projected onto
`real-time, non-image actual views of the outer layer of the patient; and
`[1b]
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
