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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MEDIVIS, INC.
`Petitioner
`
`v.
`
`NOVARAD CORP.
`Patent Owner
`
`US Patent No. 11,004,271
`
`Inter Partes Review No. IPR2023-00042
`
`_______________
`
`
`PETITIONER’S NOTICE OF APPEAL
`
`
`
`
`VIA email to Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`
`Via PTACTS to Patent Trial and Appeal Board
`
`via CM/ECF to the US Court of Appeals for the Federal Circuit
`
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`Case IPR2023-00042
`Patent 11,004,271 B2
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`Pursuant to 35 U.S.C. §§ 141, 142, and 319; 37 C.F.R. §§ 90.2, and 90.3;
`
`Rule 15 of the Federal Rules of Appellate Procedure; and 28 U.S.C. §
`
`1295(a)(4)(A); Petitioner Medivis, Inc. hereby provides notice that it appeals to the
`
`United States Court of Appeals for the Federal Circuit from the Final Written
`
`Decision in Inter Partes Review IPR2023-00042, entered March 6, 2024 (Paper
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`35); the Decision Denying Petitioner’s Request on Rehearing of Final Written
`
`Decision, entered April 23, 2024 (Paper 37); and all other underlying and related
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`findings, orders, decisions, rulings, opinions, or other determinations merged into
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`those orders.
`
`For the limited purpose of providing the Director with information required
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`by 37 C.F.R. § 90.2(a)(3)(ii), Medivis indicates that the issues on appeal may
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`include, but are not limited to, the determination of the Patent Trial and Appeal
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`Board of the US Patent and Trademark Office that Medivis had not shown by a
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`preponderance of the evidence that any of the challenged claims of the ’271 patent
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`are unpatentable, including any underlying questions of fact and law, including the
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`construction of claim terms and refusal to construe claim terms; violation of the
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`Administrative Procedure Act and Medivis’s due process rights; and all other
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`Case IPR2015-00165
`Patent 8,765,167 B2
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`issues decided adversely to Medivis, Inc., in any order, decision, ruling, or opinion
`
`by the Patent Trial and Appeal Board in Inter Partes Review IPR2023-00042.
`
`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), this Notice is being
`
`filed with the Director of the United States Patent and Trademark Office, and a
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`copy of this Notice is being concurrently filed with the Patent Trial and Appeal
`
`Board. Pursuant to 37 C.F.R. § 90.2(a)(2), a copy of this Notice along with the
`
`required docketing fees are being filed with the Clerk’s Office for the United States
`
`Court of Appeals for the Federal Circuit via CM/ECF, and a paper copy is also
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`being separately sent to the Clerk. Pursuant to 37 C.F.R. § 42.6(e), a copy of this
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`Notice is also being served on counsel of record for Patent Owner electronically
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`with Patent Owner’s consent.
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`Dated: May 6, 2024
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`
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`Case IPR2015-00165
`Patent 8,765,167 B2
`
`Respectfully submitted,
`
`By: /s/ Kia Freeman
`
`
`Filed on behalf of Petitioner,
`Medivis, Inc.
`
`By:
`
`
`Erik Paul Belt (BBO # 558620)
`Pro hac vice to the PTAB
`ebelt@mccarter.com
`Kia Freeman (BBO # 643467)
`Reg. No. 47,577
`kfreeman@mccarter.com
`John Curran (BBO # 556811)
`Reg. No. 50,445
`jcurran@mccarter.com
`Leah McCoy ((BBO # 673266)
`lmccoy@mccarter.com
`MCCARTER & ENGLISH, LLP
`265 Franklin St.
`Boston, MA 02110
`T: (617) 449-6500
`F: (617) 607-9200
`
`
`
`Attachments:
` Final Written Decision, IPR2023-00042 Paper No. 35 (Issued March 6,
`2024)
` Decision Denying Request on Rehearing of Final Written Decision,
`IPR2023-00042 Paper No. 37 (Issued April 23, 2024)
` Certificate of Filing and Service
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`Patent No. 11,004,271
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`Attorney Docket No. 127971-00012
`
`CERTIFICATE OF FILING AND SERVICE
`
`I hereby certify that today on May 6, 2024, a true and correct copy of the foregoing
`“PETITIONER’S NOTICE OF APPEAL” was filed with the Director of the
`United States Patent and Trademark Office both by electronic mail to the email
`address indicated on the US Patent and Trademark Office’s web page for the
`Office of General Counsel (efileSO@uspto.gov) and by Priority Mail Express to
`the following address:
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`c/o Office of Solicitor, Mail Stop 8
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
` I
`
` hereby certify that today on May 6, 2024, a true and correct copy of the foregoing
`“PETITIONER’S NOTICE OF APPEAL” was filed electronically through the
`Board’s current portal.
`
` I
`
` also hereby certify that today on May 6, 2024, a true and correct copy of the
`foregoing “PETITIONER’S NOTICE OF APPEAL,” was filed with the Clerk’s
`Office of the United States Court of Appeals for the Federal Circuit along with the
`docketing fee set forth in Federal Circuit Rule 52, via CM/ECF and Pay.gov, and
`one paper copy was also sent to the following address by Priority Mail Express:
`
`
`Clerk of Court
`United States Court of Appeals for the Federal Circuit
`717 Madison Place, NW
`Washington, DC 20439
`
`
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`Attorney Docket No. 127971-00012
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`Patent No. 11,004,271
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`I also hereby certify that today, on May 6, 2024, pursuant to 37 C.F.R. § 42.6(e), a
`true and correct copy of the foregoing “PETITIONER’S NOTICE OF
`APPEAL” was served by electronic service, with Novarad’s consent, on counsel
`of record for the Patent Owner at the following email addresses:
`
`
`Joseph Harmer
`Jed H. Hansen
`THORPE NORTH & WESTERN, LLP
`175 South Main, Suite 900
`Salt Lake City, Utah 84111
`joseph.harmer@tnw.com
`hansen@tnw.com
`litigation@tnw.com
`
`
`
`
`
`
`
`May 6, 2024
`
`
`
`
`
`
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` 
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`Respectfully submitted,
`
`By: /s/ Kia L. Freeman
`
`Kia L. Freeman
`
`Registration No. 47,577
`
`Attorney for Petitioner
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`Patent No. 11,004,271
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`Attorney Docket No. 127971-00012
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`ATTACHMENT A
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`Trials@uspto.gov
`571-272-7822
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`Paper 35
`Date: March 6, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MEDIVIS, INC.,
`Petitioner,
`v.
`NOVARAD CORP.,
`Patent Owner.
`
`IPR2023-00042
`Patent 11,004,271 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, Acting Vice Chief Administrative Patent Judge,
`MICHAEL R. ZECHER and SCOTT RAEVSKY, Administrative Patent
`Judges.
`RAEVSKY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`Dismissing Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`

`

`IPR2023-00042
`Patent 11,004,271 B2
`
`I.
`INTRODUCTION
`Medivis, Inc. (“Petitioner”) filed a Petition to institute an inter partes
`review of claims 1–6 and 11–20 (the “challenged claims”) of U.S. Patent
`No. 11,004,271 B2 (“the ’271 patent,” Ex. 1001). Paper 3 (“Pet.”). Novarad
`Corp. (“Patent Owner”) did not file a Preliminary Response. Based on the
`information presented in the Petition, we instituted an inter partes review of
`claims 1–6 and 11–20 (Paper 7, “Institution Decision” or “Dec.”).
`Subsequent filings include a Patent Owner Response (Paper 12, “PO
`Resp.”), a Petitioner Reply (Paper 20, “Reply”), and a Patent Owner Sur-
`reply (Paper 22, “Sur-reply”). Petitioner also filed a Motion to Exclude
`(Paper 25, “Mot.”). Patent Owner filed an Opposition to Petitioner’s Motion
`to Exclude (Paper 26, “Opp.”). Petitioner filed a Reply in Support of
`Petitioner’s Motion to Exclude (Paper 27). We held an oral hearing on
`January 30, 2024, a transcript of which has been entered into the record.
`Paper 34 (“Tr.”).
`We have jurisdiction over this proceeding under 35 U.S.C. § 6(b).
`After considering the evidence and arguments of the parties, we determine
`that Petitioner has not proven by a preponderance of the evidence that any of
`the challenged claims are unpatentable. We also dismiss Petitioner’s Motion
`to Exclude.
`
`
`2
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`IPR2023-00042
`Patent 11,004,271 B2
`
`II. BACKGROUND
`A. Real Parties in Interest
`Each party identifies itself as the real party in interest. Paper 5, 21;
`Paper 6, 1.
`B. Related Matters
`The parties identify Novarad Corp. v. Medivis, Inc., No. 21-1447-
`GBW (D. Del. 2021) as a related matter. Paper 5, 2; Paper 6, 1. Petitioner
`also filed IPR2023-00045, requesting review of U.S. Patent No. 10,945,807,
`which Petitioner describes as listing the same inventors as the ’271 patent
`and is generally directed to similar technology, but which is not part of the
`’271 patent family. Pet. 3.
`C. The ’271 Patent
`The ’271 patent relates to “[a]ugmenting real-time views of a patient
`with three-dimensional (3D) data.” Ex. 1001, code (57). The ’271 patent
`explains that conventional medical imaging systems can create 3D data for a
`patient that can be viewed on a computer display, detached from the patient,
`which may cause some problems. Id. at 2:49–55. For example, the ’271
`patent explains that a surgeon may view an image of a patient’s brain on a
`computer display to determine the location of a tumor, and then shift his
`view to the actual patient “and attempt to identify the approximate location
`on the actual patient of the tumor inside the patient’s brain.” Id. at 2:56–63.
`The surgeon, however, “may accidentally identify the left side of the brain in
`the image as having the tumor when in reality the tumor is in the right side
`of the brain,” which “may lead to the surgeon erroneously making an
`
`
`1 Patent Owner’s Mandatory Notices, filed in accordance with 37 C.F.R.
`§ 42.8, do not include page numbers. Paper 5. We consider the Title page
`as page 1 and then proceed from there in numerical order.
`
`3
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`IPR2023-00042
`Patent 11,004,271 B2
`unnecessary incision on the left side of the patient’s skull.” Id. at 2:63–3:3.
`To avoid such errors, the ’271 patent describes methods of automatically
`aligning or registering the 3D data “with a real-time view of the actual
`patient” so that “images derived from the 3D data may be projected onto the
`real-time view of the patient.” Id. at 3:21–27.
`Figure 1 of the ’271 patent is reproduced below.
`
`
`Figure 1 illustrates an augmented reality (AR) environment in which real-
`time views of a patient may be augmented with 3D data. Id. at 2:26–28.
`Environment 100 includes 3D space 102, user 104, patient 106, and AR
`headset 108 in communication with server 112 over network 110. Id.
`at 3:63–67. Environment 100 also includes virtual user interface 114, virtual
`spatial difference box 116, virtual inserted portion 118a of object 118, and
`virtual cursor 122, “all shown in dashed lines to indicate that these virtual
`elements are generated by the AR headset 108 and only viewable by the
`user 104 through the AR headset 108.” Id. at 4:1–7. The ’271 patent
`discloses that “AR headset 108 may be employed by the user 104 in order to
`augment a real-time view of the patient 106 with one or more inner layers of
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`IPR2023-00042
`Patent 11,004,271 B2
`the patient 106 including, but not limited to, bones 106b (as illustrated in
`FIG. 1), muscles, organs, or fluids.” Id. at 4:42–46.
`The ’271 patent further discloses that AR headset 108 may perform
`this augmenting of a real-time view of patient 106 regardless of the current
`position of user 104 in 3D space 102. Id. at 4:46–49. For example, user 104
`may walk around operating table 103 and view patient 106 from any angle
`within 3D space 102 while AR headset 108 continually augments the real-
`time view of patient 106 with one or more inner layers of patient 106, “so
`that both the patient 106 and the 3D data of the patient 106 may be viewed
`by the user 104 from any angle within the 3D space 102.” Id. at 4:49–57.
`D. Challenged Claims
`Claim 1 is representative of the challenged claims and is reproduced
`below.
`
`1. A method for augmenting real-time, non-image actual
`views of a patient with three-dimensional (3D) data, the method
`comprising:
`identifying 3D data for the patient, the 3D data including an outer
`layer of the patient and multiple inner layers of the patient; and
`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
`confined within the volume of a virtual 3D shape.
`Ex. 1001, 18:54–65.
`
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`IPR2023-00042
`Patent 11,004,271 B2
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–6 and 11–20 would have been
`unpatentable on the following grounds:2
`Claim(s) Challenged
`35 U.S.C. §
`1, 5, 6
`102
`1–6, 11–20
`103
`1–6, 11–20
`103
`
`Doo4
`Doo, Amira5
`Chen,6 3D Visualization,7 3D
`Slicer8
`Pet. 31. Petitioner relies on two Declaration by Peter Kazanzides, Ph.D.
`(Exs. 1012, 1021) in support of its contentions. Patent Owner relies on
`declarations by Mahesh S. Mulumudi, M.D. (Ex. 2002) and Craig
`Rosenberg, Ph.D. (Ex. 2004).
`
`Reference(s)/Basis3
`
`
`
`
`2 In the Petition’s discussion of claim 1, it also mentions claim 7, but
`Petitioner confirmed at the hearing that this was a typographical error and
`that it does not intend to challenge claim 7. Pet. 34; Tr. 16:7–21.
`3 Throughout this decision, we eliminate the parties’ italicization of
`reference names from quotations without noting “emphasis omitted.”
`4 Doo, WO 2015/164402 A1, published October 29, 2015 (Ex. 1008).
`5 Excerpt of Amira 5 User’s Guide, title through Chapter 2 (Visual Imaging
`2009) (Ex. 1005).
`6 X. Chen et al., Development of a Surgical Navigation System Based on
`Augmented Reality Using an Optical See-Through Head-Mounted Display,
`55 JOURNAL OF BIOMEDICAL INFORMATICS 124–131 (©2015) (EX. 1009).
`7 S. Pujol, Ph.D. et al., 3D Visualization of DICOM Images for Radiological
`Applications, Surgical Planning Laboratory, Brigham and Women’s Hospital
`(©2012–2014) (Ex. 1007).
`8 Main Application GUI for 3D Slicer available at
`https://www.slicer.org/wiki/Documentation/4.6/Slicer/Application/MainApp
`licationGUI (“last edited 7 November 2016”) (Ex. 1010).
`
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`IPR2023-00042
`Patent 11,004,271 B2
`
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner contends that a person having ordinary skill in the art
`(“POSITA”) would have had
`a bachelor’s degree in computer science, electrical engineering,
`or a related field with several years of experience in the design,
`development, and study of augmented reality devices and either
`(a) familiarity with conventional medical imaging data and
`visualization of data for medical procedures or (b) working with
`a team including someone with such familiarity.
`Pet. 10 (citing Ex. 1012 ¶ 25). Patent Owner does not dispute Petitioner’s
`proposed level of skill. See generally PO Resp.
`We adopt Petitioner’s proposed level of skill, except that we excise
`part of Petitioner’s definition to produce the following modified version:
`a bachelor’s degree in computer science, electrical engineering,
`or a related field with several years of experience in the design,
`development, and study of augmented reality devices and . . .
`familiarity with conventional medical
`imaging data and
`visualization of data for medical procedures . . . .
`Our edit removes the alternative of “working with a team including someone
`with such familiarity” because one’s role in a team may be tangential to their
`personal experience with medical imaging. Regardless, had we adopted
`Petitioner’s original definition, our decision would not have changed.
`B. Claim Construction
`We construe each claim “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`§ 42.100(b) (2022). Under this standard, claim terms are generally given
`their plain and ordinary meaning as would have been understood by a person
`of ordinary skill in the art at the time of the invention and in the context of
`
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`IPR2023-00042
`Patent 11,004,271 B2
`the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313
`(Fed. Cir. 2005) (en banc).
`The parties propose constructions for the claim terms “three-
`dimensional (3D) data,” “inner layer(s) of the patient,” “confined within a
`virtual 3D shape,” and “being having.” Pet. 11–14; PO Resp. 11–18. We do
`not need to construe any of these claim terms in order to resolve the issues
`presented in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d
`1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms
`. . . that are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999)).
`C. Asserted Anticipation by Doo
`Petitioner contends that claims 1, 5, and 6 are anticipated by Doo.
`Pet. 31–40.
`
`1. Overview of Doo
`Doo is directed to “an intra-operative medical image viewing system
`that can allow the surgeon to maintain a viewing perspective on the patient
`while concurrently obtaining relevant information about the patient.”
`Ex. 1008 ¶ 11. Doo’s system “can present a selectively or variably
`transparent image of an anatomical feature of a patient” to a surgeon during
`surgery as the surgeon views, or maintains a viewing perspective generally
`toward, the actual anatomical feature of the patient. Id. ¶ 30.
`Figure 2 of Doo is reproduced below.
`
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`IPR2023-00042
`Patent 11,004,271 B2
`
`
`Figure 2 is a perspective view of an embodiment described in Doo in a first
`surgical environment. Id. ¶ 17. Surgeon 26 wears display 30 suitable for
`implementing an intra-operative medical viewing system while operating on
`patient 28. Id. ¶ 38. The viewing system allows surgeon 26 to maintain a
`viewing perspective on patient 28, while concurrently obtaining relevant
`image-based information about patient 28 on demand. Id. Display 30 is
`positioned between surgeon 26 and patient 28, and is “configured to exhibit
`at least one medical image 32 to the surgeon 26 that is overlaid on the
`patient 28 (as shown in Figure 2) or that is positioned in an adjacent
`hovering location as perceived by the surgeon 26.” Id. “[D]isplay 30 can be
`a component of a head mountable unit 46 . . . worn by the surgeon 26 while
`the surgeon 26 is operating on the patient 28.” Id. ¶ 44.
`
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`IPR2023-00042
`Patent 11,004,271 B2
`2. Independent Claim 1
`a. the projected inner layer of the patient from the 3D
`data being confined within the volume of a virtual 3D
`shape.
`We address solely this limitation of claim 1 because it is dispositive of
`this ground. Petitioner presents two theories of unpatentability for this
`limitation, which we address in turn.
`(1) Doo Figures 7–9
`Petitioner’s first argument relies on Doo’s Figures 7–9. Pet. 36–37.
`Figure 7 of Doo is reproduced below:
`
`
`According to Petitioner, Doo’s Figure 7 illustrates a “false 3D” or “2.5D”
`modality “in which a two-dimensional image can be wrapped around a three
`dimensional structure, namely the body surface of the patient 28.” Id. at 37
`(citing Ex. 1008 ¶ 75).
`
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`IPR2023-00042
`Patent 11,004,271 B2
`Petitioner further points to Doo’s Figures 8 and 9, reproduced below,
`which “illustrate the concept of image wrapping as introduced in . . . Figure
`7.” Id. (citing same).
`
`
`Petitioner explains that “Figure 8 is a perspective view of a two dimensional
`image 532 in a planar configuration.” Id. (citing same). Continuing,
`Petitioner explains that “Figure 9 is a perspective view of the two-
`dimensional image 532 shown in Figure 8 but rendered in a warped
`configuration to mimic the surface curvature of the patient’s body.” Id.
`(citing same). Petitioner further explains that “[i]n Figure 9, the image 532
`has been wrapped around the axis 94.” Id. Petitioner concludes that the
`resulting image of the projected inner layer of the patient in Doo’s Figure 7
`is confined within the volume of the virtual 3D shape illustrated in Figure 9.
`Id. (citing Ex. 1012 ¶ 75).
`Patent Owner argues that Doo’s curved 2D plane in Figures 7 and 9
`cannot confine a 3D volume. PO Resp. 29. Patent Owner contends that
`“Doo’s curved 2D plane, illustrated in Figures 7 and 9, is not 3D data,”
`based on Patent Owner’s construction for “3D data.” Id. at 30. Patent
`
`11
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`IPR2023-00042
`Patent 11,004,271 B2
`Owner also presents other arguments based on its construction for “confined
`within a virtual 3D shape.” Id.
`We need not determine whether Doo’s curved plane constitutes “3D
`data” or “confined within a virtual 3D shape” as construed by Patent Owner
`because we agree for other reasons that Doo’s curved plane does not
`disclose “the projected inner layer of the patient . . . being confined within a
`volume of a virtual 3D shape.”9
`First, neither the Petition nor Dr. Kazanzides explains how Doo’s
`curved plane teaches the claimed “volume.” See Pet. 36–37; Ex. 1012
`¶¶ 74–75 (essentially repeating the Petition). The Petition merely asserts
`that Doo’s image in Figure 7 “is confined within the volume of the virtual
`3D shape illustrated in Figure 9,” without explaining how the shape of
`Figure 9 has a “volume.” Pet. 37. The Reply does no better, asserting that
`“Doo’s shape 532 in Figure 9 and shape 432 in Figure 7 are virtual 3D
`shapes.” Reply 18. This statement is conclusory and does not explain how
`Doo’s “false 3D” shapes have volume. Petitioner further attempts to
`establish that Doo’s disclosure of Figure 9’s shape 532 as “mimic[ing] the
`surface curvature of the patient’s body” is evidence that Doo discloses a 3D
`shape. Id. (citing Ex. 1008 ¶ 76). This argument, however, is unpersuasive
`because it takes Doo’s statement out of context. Doo explains that Figure
`9’s warped “two-dimensional image 532 . . . mimic[s] the surface curvature
`of the patient’s body,” not that it has volume. See Ex. 1008 ¶ 76 (emphasis
`added). In other words, even though Doo’s shape 532 of Figure 9, when
`projected on a patient’s body (as in Figure 7) may appear to a surgeon like a
`
`9 Our Institution Decision did not rely on Petitioner’s theory based on Doo
`Figures 7–9. We discuss our Institution Decision’s reasoning below under
`Petitioner’s second theory based on Doo Figures 6 and 11.
`
`12
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`IPR2023-00042
`Patent 11,004,271 B2
`half-cylinder shape having a volume, Doo’s technique avoids rendering a 3D
`shape like a half-cylinder (hence calling these “false 3D shapes”) because it
`instead simulates the body’s curvature with a mere curved two-dimensional
`plane.
`Second, we find that Doo’s curved plane does not, in fact, have a
`volume.10 Instead, Doo’s curved plane is a 2D plane merely “wrapped
`around an axis.” See Ex. 1008 ¶¶ 75–76. As Patent Owner persuasively
`argued at the hearing, Doo’s curved plane is not “half of a cylinder. It’s just
`a wrapped piece of paper.” Tr. 33:14–15. Just as curving a piece of paper
`would not give the curved paper a half cylinder’s volume, neither does
`curving Doo’s flat 2D plane create a half cylinder with volume. Viewed
`another way, curving a 2D plane does not impart volume to the plane any
`more than curving a 1D line into a parabola would impart area to the 1D
`line.
`
`During the hearing, Petitioner raised the following argument about
`volume in response to questioning from the panel:
`JUDGE RAEVSKY: . . . [W]hen it’s curved, how
`does the plane have height, width, and depth in Doo?
`MS. FREEMAN: Well okay. If you take a plane and
`you curve it, then there is a distance between the closer sides
`and that defines another boundary.
`Id. at 43:13–17. This argument is unsupported and unpersuasive. By
`arguing that Doo’s curved plane has “a distance between the closer sides,”
`
`
`10 The parties do not dispute the meaning of the term “volume,” and we view
`the term as having its plain and ordinary meaning. The specification uses
`the term “volume” consistent with its plain and ordinary meaning,
`describing, for example, a “virtual spatial difference box” that confines a
`projected inner layer of the patient “within a volume of the virtual spatial
`different box.” Ex. 1001, 6:5–8 (emphasis added); see also Figs. 1, 2C–2F.
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`Petitioner attempts to convert Doo’s curved plane into a half cylinder. If
`Doo intended to show a half cylinder, it would have, but it did not, as can be
`seen again in Figure 9 below:
`
`
`Doo describes Figure 9’s two-dimensional image 532 as merely the flat
`plane of Figure 8 “wrapped around the axis 94,” not a half-cylinder. See
`Ex. 1008 ¶ 76.
`Finally, Petitioner also asserted at the hearing that Patent Owner
`admits that 3D shapes have volume. Tr. 19:10–13 (referring to Opp. 15). In
`its Opposition to Petitioner’s Motion to Exclude, Patent Owner states that
`“[a] 3D shape has a volume. ‘Within a 3D shape’ is therefore synonymous
`with ‘within a volume of a 3D shape.’” Opp. 15. Elsewhere, Dr. Rosenberg
`clarifies that a “virtual 3D shape” is one “capable of confining within its
`boundaries the 3D data that is . . . superimposed[] onto a patient,” so it “does
`more than merely outline an image projected in a 3D space.” Ex. 2004
`¶¶ 89–90. In proper context, then, we do not read Patent Owner’s
`Opposition statement to refer to all 3D shapes, but only to those 3D shapes
`that are capable of confining a 3D image within their boundaries. Doo
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`describes its shape in Figures 7 and 9 not as 3D shapes, but rather, as “false
`3D” or “2.5D.” See Ex. 1008 ¶ 75. Petitioner has not persuasively argued
`that Doo’s curved plane is the type of 3D shape that would have volume
`(such as the half-cylinder as argued by Petitioner at oral argument). In sum,
`we do not read Patent Owner’s Opposition as admitting that Doo’s specific
`shape, the false 3D curved plane, is a 3D shape having volume.
`
`Thus, Petitioner fails to establish that Doo’s curved plane has “a
`volume of a virtual 3D shape” as claimed. Petitioner therefore does not
`establish that Doo’s Figures 7–9 disclose the claimed “projected inner layer
`of the patient from the 3D data being confined within the volume of a virtual
`3D shape.”
`
`(2) Doo Figures 6 and 11
`Petitioner’s second argument is based on Doo’s Figures 6 and 11. Pet.
`3638. Petitioner asserts that Figure 11 illustrates “a series of three-
`dimensional tomographic slices of an anatomical feature of a patient,” and
`argues that Doo discloses “a fusion of several tomographic slices can be
`stitched together to create a 3D image.” Id. at 3637 (citing Ex. 1008 ¶¶ 26,
`78). Figure 6 of Doo is reproduced below:
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`
`Petitioner further contends that “Figure 6 illustrates the projection of a
`virtual heart into a patient.” Id. “At the relevant time,” Petitioner argues,
`“medical imaging displayed images of a patient[’]s inner layers confined
`within a virtual 3D shape, which may or may not be displayed.” Id. “For
`example,” Petitioner argues, “Doo’s Figure 11 is a series of [3D]
`tomographic slices” that can be “stitched together to create a 3D image,”
`thereby “forming a virtual 3D shape.” Id. (citing Ex. 1012 ¶ 76). Figure 11
`of Doo is reproduced below:
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`
`According to Petitioner, Figure 11 depicts a virtual 3D shape, namely “a
`virtual box” including sides illustrated by dashed lines. Id. “Each of the
`inner layers illustrated in Doo’s Figure 11 is confined within the virtual 3D
`shape,” Petitioner argues. Id. Petitioner also cites Dr. Kazanzides’s
`testimony that a “person of ordinary skill in the art at the relevant time
`would [have understood] that any projected inner layer of a patient would be
`confined within a volume of a virtual 3D shape, whether the virtual 3D
`shape were displayed or not.” Id. (citing Ex. 1012 ¶¶ 76–77).
`First, we address Petitioner’s argument regarding how Figure 6
`projects “a virtual heart into a patient.” Pet. 38. Patent Owner disputes
`Petitioner’s assertion that, “[a]t the relevant time, medical imaging displayed
`images of a patient[’]s inner layers confined within a virtual 3D shape,
`which may or may not be displayed” because neither Petitioner nor Dr.
`Kazanzides identifies any reference disclosing this. PO Resp. 28–29
`(quoting Pet. 38). The Reply responds that the Petition’s statement was not
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`“conjecture,” but rather, that “among other features of conventional medical
`imaging systems, the Petition discusses the bounding boxes of Amira and
`3D-Visualization,” and “[b]y definition, a bounding box confines 3D data
`within a volume.” Reply 17–18 (citing Pet. 16–23; Ex. 1005, 40). We find
`Petitioner’s argument unpersuasive because the Reply’s reference to Amira
`and 3D Visualization implicitly relies on obviousness over these references
`or over the knowledge of a person of ordinary skill in the art described in
`these references, which has no bearing on anticipation over Doo.11
`Second, as for Doo Figure 6 itself, Patent Owner points out that the
`Petition mentions Figure 6’s virtual heart projection “but make[s] no further
`argument on this point.” PO Resp. 32. We agree. It appears that Petitioner
`intends to rely on Figures 6 and 11 together, but the Petition is unclear. See
`Pet. 38. The Reply also does not clarify the Petition’s reliance on Figure 6
`because it does not discuss Figure 6 at all for this limitation. Reply 17–18.
`At the hearing, Petitioner argued that “in Figure 6 there’s different volumes
`that could be existing,” but that is not a persuasive argument that a volume
`does exist in Figure 6. Tr. 43:18–22 (emphasis added). Petitioner further
`conceded that “[a] virtual 3D shape apart from the heart, and the lines
`coming off of the goggles is not separately shown” in Figure 6. Id. at 44:8–
`9. Nowhere does Petitioner’s briefing address the “lines coming off of the
`
`
`11 Although the knowledge of one skilled in the art can be relevant to an
`anticipation analysis, Petitioner does not rely on any inference that the
`ordinarily skilled person would have drawn from Doo. See Eli Lilly and Co.
`v. Los Angeles Biomedical Res. Inst. at Harbor-UCLA Med. Ctr., 849 F.3d
`1073, 1074–75 (Fed. Cir. 2017) (“[T]he dispositive question regarding
`anticipation is whether one skilled in the art would reasonably understand or
`infer from a prior art reference that every claim element is disclosed in that
`reference.”).
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`goggles” in Doo Figure 6, nor does Doo appear to discuss them. See
`Ex. 1008 ¶ 74. Thus, there is no persuasive argument of record that these
`lines constitute a virtual 3D shape. And Petitioner does not explain how
`Figure 6’s virtual heart can be both the virtual 3D shape and the projected
`inner layer at the same time. Moreover, Petitioner admitted, and we agree,
`that no volume is “clearly displayed in Figure 6” of Doo. Id. at 43:21–22.
`Not only is no volume “clearly displayed,” but no volume is displayed at all.
`Thus, even if Doo’s heart in Figure 6 disclosed both the projected inner layer
`and the virtual 3D shape, there is no evidence that the heart is “confined
`within a volume of a virtual 3D shape,” as claim 1 requires.
`Third, as for Doo’s Figure 11, Patent Owner responds that this figure
`shows “a graphical representation of a series of three tomographic slices.”
`PO Resp. 31 (citing Ex. 2002 ¶ 110). The rectangles and dashed lines
`shown “are only meant to illustrate an alignment of the representative
`slices,” Patent Owner argues. Id. (citing Ex. 2002 ¶ 110); Sur-reply 18.
`Thus, Patent Owner concludes, they are not representative of any virtual 3D
`shape. PO Resp. 31. We agree.12
`Our Institution Decision preliminarily agreed with Petitioner’s
`assertion that “[t]he virtual 3D shape illustrated in Doo’s Figure 11 is a
`virtual box including a top side, a bottom side, a left side, a right side, a front
`side, and a back side.” Dec. 11 (citing Pet. 38). Upon review of the full
`record, we now agree with Patent Owner that the rectangles and dashed lines
`shown in Figure 11 are not representative