Filed on Behalf of Novarad Corp.
`
`By: Joseph Harmer
`Jed Hansen
`Thorpe North & Western, LLP
`175 S. Main St., Ste. 900
`Salt Lake City, UT 84111
`Tel: (801) 566-6633
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`MEDIVIS, INC.,
`
`Petitioner,
`
`
`v.
`
`
`NOVARAD CORP.,
`
`Patent Owner.
`_____________
`
`Patent 11,004,271 B2
`_____________
`
`Case IPR 2023-00042
`
`
`
`PATENT OWNER SUR-REPLY
`
`
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`
`TABLE OF CONTENTS
`
`
`
`PETITIONER HAS NOT CARRIED ITS BURDEN ..................................... 1
`I.
`II. NOVARAD’S EXPERTS ARE QUALIFIED ................................................ 1
`III. MEDIVIS’ BELATED PRODUCTION ......................................................... 4
`IV. MEDIVIS’ LACK OF CANDOR ................................................................... 5
`V. NOVARAD’S CLAIM CONSTRUCTIONS ARE PROPER ........................ 6
`A. “3D Data” is Not “2D Data.” ........................................................................... 6
`B. 3D Data is Direct Volume Rendered (DVR).................................................... 9
`C. “Inner Layer(s) of the Patient” .......................................................................10
`D. “Confined Within a Volume” .........................................................................12
`E. “Being Having” is Correctable Error. ............................................................12
`VI. DOO DOES NOT ANTICIPATE CLAIMS 1, 5, AND 6. ...........................13
`A. Doo Does Not Anticipate Claim 1. ................................................................13
`i. Doo does not disclose “3D data … including an outer layer … and multiple
`inner layers.” ..................................................................................................14
`ii. Doo does not disclose “displaying … one of the inner layers of the patient
`from the 3D data.” .........................................................................................15
`iii. Doo does not disclose “being confined within a virtual 3D shape.” .........17
`B. Doo Does Not Anticipate Claims 5 and 6. .....................................................19
`VII. CLAIMS 1-6 AND 11-20 ARE NOT OBVIOUS IN VIEW OF DOO AND
`AMIRA. .....................................................................................................................19
`A. No Motivation to Combine Doo and Amira. ..................................................19
`B. Claim 1 is Not Obvious in view of Doo and Amira. ......................................22
`C. Claims 2-6 are Not Obvious in view of Doo and Amira. ...............................23
`D. Claims 12-20 are Not Obvious in view of Doo and Amira. ...........................24
`VIII. CLAIMS 1-6 AND 11-20 ARE NOT OBVIOUS IN VIEW OF CHEN, 3D
`VISUALIZATION, AND 3D-SLICER. .....................................................................25
`A. No Motivation to Combine Chen, 3D Visualization, and 3D-Slicer (“the
`Chen Combination”). .....................................................................................25
`ii
`
`
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`B. Claims 1-6 are Not Obvious in view of the Chen Combination. ...................26
`C. Claims 11-20 are Not Obvious in view of the Chen Combination. ...............26
`IX. CONCLUSION ..............................................................................................27
`
`
`
`
`
`
`
`iii
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Apotex Inc. v. Wyeth LLC,
`IPR2014-00115 (Apr. 20, 2015) ...........................................................................19
`Blackberry Corp. v. Zipit Wireless, Inc.,
`IPR2014-01506 (March 29, 2016) ......................................................................... 4
`Enzo Biochem v. Gen-Probe, Inc.,
`424 F.3d 1276 (2005) ............................................................................................. 1
`General Access Solutions, Ltd. v. Sprint Spectrum L.P.,
`811 F. App’x 654 (Fed. Cir. 2020) ......................................................................... 2
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F. 3d 1356 (Fed. Cir. 2016) ............................................................................. 1
`In re Enhanced Security Research, LLC,
`739 F.3d 1347 (Fed. Cir. 2014) ............................................................................22
`Laboratoire Francais du Fractionnement et des Biotechnologies S.A. v. Novo
`Nordisk Healthcare AG,
`IPR2017-00028 (June 13, 2017) ........................................................................... 4
`Net MoneyIn, Inc. v. Verisign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ............................................................................14
`Procter & Gamble Co. v. Teva Pharms. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ..............................................................................19
`SEB S.A. v. Montgomery Ward & Co.,
`594 F.3d 1360 (Fed. Cir. 2010) .............................................................................. 3
`Shopkick, Inc. v. Novitaz, Inc.,
`IPR2015-00279 (May 29, 2015)...........................................................................20
`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) .............................................................................. 3
`Statutes
`35 U.S.C. § 312(a)(3) ................................................................................................. 1
`37 C.F.R. § 42.11 ....................................................................................................... 4
`37 C.F.R. § 42.53(a) ................................................................................................... 2
`37 C.F.R. § 42.65(a) ................................................................................................... 1
`
`
`
`
`
`iv
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`
`Exhibit No.
`Ex. 2002
`Ex. 2003
`Ex. 2004
`Ex. 2005
`Ex. 2006
`Ex. 2007
`Ex. 2008
`Ex. 2009
`
`EXHIBIT LIST
`Exhibit Description
`Declaration of Mahesh S. Mulumudi, M.D. (“Mulumudi”)
`Dr. Mulumudi C.V.
`Declaration of Craig Rosenberg, Ph.D. (“Rosenberg”)
`Dr. Rosenberg C.V.
`Dr. Kazanzides Deposition (“Kazanzides Depo”)
`Dr. Rosenberg Resume
`Dr. Rosenberg Supplemental Declaration
`Dr. Mulumudi Supplemental Declaration
`
`
`
`
`v
`
`

`

`Kazanzides
`Kaz.Dec.
`
`Kaz.Supp.
`
`Kaz.Tr.
`
`Mulumudi
`Mul.Dec.
`Mul.Supp.
`
`Mul.Tr.
`
`Rosenberg
`Ros.Dec.
`
`Ros.Supp.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`LIST OF ABBREVIATIONS
`Dr. Peter Kazanzides
`Ex. 1012, Kazanzides’ Trial Declaration dated October 12,
`2022
`Ex. 1021, Kazanzides’ Supplemental Trial Declaration
`dated May 22, 2023
`Ex. 2006, Kazanizides’ Trial Deposition Transcript dated
`June 22, 2023
`Dr. Mahesh Mulumudi
`Ex. 2002, Mulumudi’s Trial Declaration dated July 18, 2023
`Ex. 2009, Mulumudi’s Supplemental Trial Declaration
`dated August 8, 2023
`Ex. 1022, Mulumudi’s Trial Deposition Transcript dated
`September 19, 2023
`Dr. Craig Rosenberg
`Ex. 2004, Rosenberg’s Trial Declaration dated July 17,
`2023
`Ex. 2008, Rosenberg’s Supplemental Trial Declaration
`dated August 8, 2023
`
`
`
`
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`I.
`
`PETITIONER HAS NOT CARRIED ITS BURDEN
`
` “In an [inter partes review], the petitioner has the burden from the onset to
`
`show with particularity why the patent it challenges is unpatentable.” Harmonic
`
`Inc. v. Avid Tech., Inc., 815 F. 3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`
`§ 312(a)(3) (requiring inter partes review petitions to identify “with particularity
`
`… the evidence that supports the grounds for challenge to each claim”)). Medivis
`
`has failed to carry this burden. Indeed, much of Medivis’ Reply (Paper 20) is
`
`attorney argument or expert testimony that is unsupported by facts or data.
`
`“Attorney argument is no substitute for evidence.” Enzo Biochem v. Gen-Probe,
`
`Inc., 424 F.3d 1276, 1285 (2005). And expert testimony that is not based on facts
`
`or data is afforded “little weight.” 37 C.F.R. § 42.65(a).
`
`In short, the invention allows a physician to look inside a patient while the
`
`patient is lying on the operating table. It also provides a physician with the ability
`
`to navigate an immersive 3D volume of patient imaging in any direction while it is
`
`co-registered to the patient. The prior art does not do this. The prior art only
`
`displays 2D images, stacks of 2D images, and 3D surface models.
`
`II. NOVARAD’S EXPERTS ARE QUALIFIED
`Medivis argues that Novarad’s experts are not qualified to provide testimony
`
`helpful to the trier of fact. Reply, 2. More specifically, Medivis argues that
`
`Novarad “has not cited in its response any evidence that its declarants are qualified
`
`
`
`1
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`or that their opinions are reliable.” Id., 2. Medivis accuses Novarad of forcing the
`
`Board to “play ach[a]eologist with the record” and argues that “none of the
`
`statements in the [Patent Owner’s] Response attributed to Novarad’s declarants
`
`should be considered admissible evidence.” Id., 2. This argument lacks merit.
`
`Medivis’ only legal support is an unpublished opinion, General Access
`
`Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App’x 654, 657 (Fed. Cir. 2020).
`
`That case is not applicable. There, the patent owner attempted to establish a date
`
`of conception, but only made general allegations in its patent owner response. The
`
`Board was forced to turn to the inventor’s declaration but refused to “delve into a
`
`twenty-nine-page claim chart attached as an exhibit” to the inventor’s declaration.
`
`Id.
`
`That is not the case here. In proceedings before the USPTO, the
`
`qualifications of an expert are provided within the expert’s declaration that
`
`accompanies the patent owner’s response. That declaration is treated like trial
`
`testimony, which lays the foundation for the expert’s qualifications. See generally,
`
`37 C.F.R. § 42.53(a). There is no requirement that the patent owner repeat those
`
`qualifications in its briefing. The Declarations of Mahesh S. Mulumudi (Ex. 2002)
`
`and Craig Rosenberg (Ex. 2004) and Supplemental Declarations of Mulumudi
`
`(Ex. 2009) and Rosenberg (Ex. 2008) are part of the trial record and comfortably
`
`establish their qualifications.
`
`
`
`2
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`Moreover, “[a] witness may qualify as an expert if they have ‘knowledge,
`
`skill, experience, training, or education’ of a ‘scientific, technical, or other
`
`specialized’ nature that is likely to help the Board ‘to understand the evidence or to
`
`determine a fact in issue.’” Flex Logix Technologies, Inc. v. Venkat Konda,
`
`IPR2020-00260/61 (July 29, 2021) (Paper 55/58, *8) (citing FRE 702). There is
`
`“no requirement of a perfect match between the expert’s experience and the
`
`relevant field.” PTAB Consolidated Trial Practice Guide, 34 (Nov. 2019),
`
`https://go.usa.gov/xpvPF (“CTPG”) (citing SEB S.A. v. Montgomery Ward & Co.,
`
`594 F.3d 1360, 1373 (Fed. Cir. 2010))). Indeed, “[a] person may not need to be a
`
`person of ordinary skill in the art in order to testify as an expert under Rule 702,
`
`but rather must be “qualified in the pertinent art.” Id. (citing Sundance, Inc. v.
`
`DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008).
`
`Rosenberg and Mulumudi are clearly qualified to help the Board here.
`
`Medivis submits no expert evidence to the contrary.1 Mulumudi is a medical
`
`doctor. Ex. 2002, ¶¶ 16-24. He is “very familiar with conventional medical
`
`imaging data and visualization of that data for use during medical procedures.”
`
`Ex. 2009, ¶ 6. And he has “over 20 years of experience treating peripheral
`
`vascular and coronary artery diseases using 2D and 3D medical imaging, including
`
`
`1 Petitioner deposed Mulumudi but chose not to ask any questions about his
`qualifications. Petitioner did not depose Rosenberg.
`3
`
`
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`‘3D Ultrasound, gated Computerized Tomography (CT), and Magnetic Resonance
`
`Imaging (MRI).’” Ex. 2002, ¶ 13 (citing Ex. 2003, Mulumudi’s C.V., 1). See also
`
`id., ¶¶ 6, 7.
`
`Rosenberg has a BS in Industrial Engineering, a MS in Human Factors, and
`
`a PhD in Human Factors. Ex. 2004, ¶ 16. Rosenberg has over 30 years of
`
`experience in “human factors, user interface design, user interaction design,
`
`human-computer interaction, and software engineering from 1988 through today.”
`
`Id., ¶ 13.
`
`III. MEDIVIS’ BELATED PRODUCTION
`
`In its Response, Novarad noted Medivis’ failure to authenticate its
`
`references. In an attempt to remedy that failure, Medivis added additional chapters
`
`to Amira. Medivis attempts to tangentially rely on those additional chapters by
`
`referencing Amira’s previously produced table of contents. Reply, 22 (citing Ex.
`
`1005, vi/100-vii/11). This is improper. Medivis cannot rely on additional prior art
`
`that was submitted after its Petition to carry its burden without leave from the
`
`Board. See, e.g., Laboratoire Francais du Fractionnement et des
`
`Biotechnologies S.A. v. Novo Nordisk Healthcare AG, IPR2017-00028 (June 13,
`
`2017) (Paper 22). All of Exhibits 1023 and 1024, to the extent they are relied on
`
`as prior art, should be disregarded.
`
`
`
`
`
`4
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`IV. MEDIVIS’ LACK OF CANDOR
`
`Everyone involved in proceedings before the Board is expected to have a
`
`duty of candor and good faith during the course of a proceeding. 37 C.F.R.
`
`§ 42.11. “Even the slightest accommodation of deceit or a lack of candor in any
`
`material respect quickly erodes the validity of the process.” Blackberry Corp. v.
`
`Zipit Wireless, Inc., IPR2014-01506, Final Written Decision, *9 (March 29, 2016).
`
`In support of its argument, and for the first time on Reply, Medivis
`
`frequently references a supposed “preferred” embodiment. See, e.g., Reply, 6, 7,
`
`16, 17, 21, 28, etc. This argument lacks candor. Nowhere does the ’271 Patent
`
`even mention the term “preferred.” Medivis’ “preferred embodiment” arguments
`
`are consistent with its other unsupported attorney argument and baseless opinions.
`
`The Board should not take any of these arguments at face value.
`
`In other locations throughout its papers, Medivis misleads the Board by
`
`taking excerpts from Mulumudi’s deposition out of context. For example, after
`
`asking Mulumudi if English was his first language, counsel assaulted him with a
`
`belittling vocabulary test and litany of obtuse questions (for example, “Are you
`
`familiar with the English word ‘shape’?” and, “Is the English word ‘shape’ a
`
`technical word?”). Medivis takes these answers out of context to misrepresent
`
`“facts” to the Board. Medivis argues that “Novarad’s proffered-expert testified
`
`that ‘shape’ is not a technical term and that the only meaning of ‘shape’ he could
`
`
`
`5
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`identify is ‘form.’” Reply, 11 (citing Ex. 1022, 17:5-18:13). However,
`
`Mulumudi’s actual answer to “Is the English word ‘shape’ a technical word?” was
`
`“Not that I know of. Depends on the context.” Ex. 1022, 17:12-16.
`
`V. NOVARAD’S CLAIM CONSTRUCTIONS ARE PROPER
`Novarad’s claim construction is consistent with a skilled artisan’s
`
`understanding of the specification and the claims.
`
`A.
`
`“3D Data” is Not “2D Data.”
`
`The person of ordinary skill in the art (POSITA) understands that the “3D
`
`data” described in the ’271 Patent is a navigable direct volume rendered dataset.
`
`See Ex. 2002, Mul.Dec., ¶ 60. Medivis argues that “3D data” means merely “one
`
`or more [2D] images.” Reply, 3. Medivis also argues that the “3D data” must
`
`include a 2D X-ray because the ’271 Patent says “3D data may include a 2D
`
`image, such as an X-ray image, because when the 3D image is projected into a 3D
`
`space the 2D image has 3D significance.” Id., 5 (citing Ex. 1001, 12:4-7)
`
`(emphasis added). Medivis’ argument lacks merit for several reasons.
`
`First, the specification does not say that an X-ray image projected into a 3D
`
`space is in fact 3D. Rather, it explains that it has 3D significance. The ’271
`
`Patent provides several embodiments of “3D data,” some of those embodiments
`
`“include an outer layer of the patient and multiple inner layers of the patient,” as
`
`claim 1 requires. Ex. 1001, 11:61-63. A 2D X-ray is not 3D and “does not include
`
`
`
`6
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`‘an outer layer … and multiple inner layers of the patient...’” Ex. 2002, Mul.Dec.,
`
`¶ 99.
`
`Second, there is no dispute that 3D data has height, width, and depth and is
`
`confined within a virtual 3D shape, i.e., a virtual spatial difference box 116. See
`
`Ex. 1001, 6:5-8 (“the virtual spatial difference box 116 may confine within a
`
`volume of the virtual spatial difference box 116 the projected inner layer of the
`
`patient 106 from the 3D data”). A single 2D X-ray does not have height, width,
`
`and depth. And while a user may “display a slice of the 3D data instead of a
`
`volume of the 3D data,” the 3D data (and the “slice” for that matter) is still three-
`
`dimensional. See Ex. 1001, 5:34-35 (emphasis added).
`
`
`
`Third, in support of its “3D is really 2D” argument, Medivis’ counsel argues
`
`that “FIGS. 2C and 2E each illustrate a 2D CT image projected and confined
`
`within a virtual box.” Reply, 9.
`
`
`
`7
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`
`Ex. 1001, 5-6. That characterization is incorrect. The ’271 Patent explains that “a
`
`
`
`
`
`
`
`user may employ a hand gesture in order to have an axial slice of 3D data
`
`representing a CT image of the patient’s brain projected onto a real-time view of
`
`the first patient.” Ex. 1001, 8:33-36 (emphasis added). FIGS. 2C-2F show slices
`
`of the 3D data confined within the virtual box that “represent” a CT image—they
`
`are not conventional 2D CT images themselves.
`
`Fourth, the record evidence establishes that the 3D data is a 3D volume
`
`navigable in any direction. See Ex. 1001, 6:5-25 (“when navigating the projected
`
`3D data…”). A user can navigate the volume by dragging the plane shown in
`
`FIGS. 2C-2F through the 3D volume, thereby revealing anatomical structure at any
`
`
`
`8
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`location and along any axis within the 3D volume. In other words, a user may
`
`“display different slices of the 3D data including, but not limited to, axial slices,
`
`coronal slices, sagittal slices, and oblique slices.” Ex. 1001, 5:38-40. See also, Ex.
`
`1001, 6:11-21 (“In some embodiments, the virtual spatial difference box 116 may
`
`also assist a user when navigating the projected 3D data by providing a frame of
`
`reference for the user 104. For example, this frame of reference may assist the user
`
`when moving axial slices, coronal slices, sagittal slices, or oblique slices2 of the
`
`3D data within the virtual spatial difference box 116.” (emphasis added)).
`
`A user can also display the full volume of the 3D data within the 3D virtual
`
`shape. See Ex. 1001, 5:34-35 (“display … a volume of the 3D data”). A user can
`
`also peel back the layers of the 3D data as one might peel an orange. The ’271
`
`Patent explains that the “3D slices may include curved slices, such as curved slices
`
`that follow the natural curve of an anatomical feature, or slices that have depth as
`
`well as height and width.” Ex. 1001, 6:18-20.
`
`Any argument that “3D data” should be read to mean a single 2D X-ray is
`
`nonsense.
`
`B.
`
`3D Data is Direct Volume Rendered (DVR).
`
`Medivis contends that “DVR is found nowhere in the claims or
`
`
`2 “Oblique slices” also indicates a 3D volume because medical images are not
`acquired obliquely.
`
`
`
`9
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`specification” (Reply, 3) but offers absolutely no evidence to contradict
`
`Mulumudi’s explanation as to why, in the context of the ‘271 Patent, “3D data”
`
`must be describing DVR data. Mulumudi explains:
`
`a POSITA understands that the ’271 Patent describes direct volume
`rendered 3D data because only a DVR image is 3D, includes an outer layer
`and multiple inner layers of the patient, and can be cut along any axis and
`viewed from any angle in real-time. A POSITA understands that only DVR
`provides the comprehensiveness, detail, and flexibility to visualize and
`navigate the internal layers of a projected 3D volume of a patient in real
`time: “all the way through the patient,’ at a ‘certain partial depth into the
`patient,’ and along multiple axes, as described in the ’271 Patent.
`
`Ex. 2002, ¶ 60 (citing Ex. 1001, 12:13-16).
`
`Moreover, only DVR:
`
`can offer perspectives that are not limited to traditional planes (e.g., axial,
`sagittal, and coronal), enabling a view of the anatomical structures within the
`volume of a patient from any direction,” as described in the ’271 Patent.
`
`
`Id., ¶ 54; see also, id. at ¶ 56.
`
`
`C.
`
`“Inner Layer(s) of the Patient”
`
`Claim 1 requires “displaying … 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….” Ex. 1001, 18:60-63. Within the context of the ’271 Patent, any
`
`lesser portion of a 3D volume is also 3D. See Ex. 2002, Mul.Dec., ¶¶ 67-72. The
`
`’271 Patent explains that the “multiple inner layers [of the 3D data] may be layers
`
`that go all the way through the patient 106, or may be layers that only go to a
`
`
`
`10
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`certain partial depth into the patient.” Ex. 1001, 12:13-16 (emphasis added). Put
`
`plainly, the projected inner layer will always have a “depth” and will therefore
`
`always be 3D.
`
`Medivis argues that FIG. 1 of the ’271 Patent demonstrates that the inner
`
`layers of the “3D data” can be two-dimensional and are “segmented from the
`
`whole volume” Reply, 8 (arguing that FIG. 1 shows still X-ray images). Medivis’
`
`attorney argument lacks merit. “3D data … may be captured or generated using
`
`one or more methods” from a variety of different sources. Ex. 1001, 11:37-38,
`
`45-51 (emphasis added). This includes a direct volume rendering generated from
`
`multiple X-rays. Just because the ’271 Patent provides an example of using a
`
`plurality of X-rays to generate a direct volume rendering does not mean that the
`
`“3D data” itself is merely a single conventional 2D X-ray.
`
`In support of its “2D inner layer” argument, Medivis asserts that the bones
`
`16b in FIG. 1 are “a specific feature segmented from the whole volume.” Reply, 8.
`
`But the ’271 Patent does not mention “segmentation” at all. Rather, the bones 16b,
`
`illustrated in FIG. 1, are merely one example of the many 3D inner layers available
`
`and visible within the 3D dataset, including, “but not limited to, … muscles,
`
`organs, or fluids of the patient 106.” Ex. 1001, 12:1-4.
`
`Medivis also argues that “FIGS. 2C and 2E each illustrate a 2D CT image
`
`projected and confined within a virtual box.” Reply, 9. However, as explained
`
`
`
`11
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`above (see supra, 8-9), FIGS. 2C and 2E show an “…axial slice of 3D data
`
`representing a CT image of the patient’s brain projected onto a real-time view of
`
`the first patient.” Ex. 1001, 8:33-36 (emphasis added). These slices are not a
`
`conventional 2D CT image, but a slice of the “3D data.”
`
`D.
`
`“Confined Within a Volume”
`
`Medivis contends that “Novarad argues that ‘confined’ means ‘navigated …
`
`along any axis.” Reply, 10 (citing PO’s Response (Paper 12), 18, 27, and 28).
`
`Petitioner misstates Novarad’s construction.
`
` It is true that the 3D data of the ‘271 Patent is navigable along any axis.
`
`However, “confinement” of the 3D data within the virtual 3D shape “requires a
`
`navigational or orientation function that allows the user to manipulate and view 3D
`
`slices of the patient’s anatomy along multiple axes.” Response, 18. Claim 3, for
`
`example, recites that “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.” Ex. 1001, 19:7-10. The virtual 3D shape not
`
`only shows the user the boundaries where the 3D data is available for the user to
`
`view, navigate, and/or explore, but it is also “configured to be controlled.”
`
`E.
`
`“Being Having” is Correctable Error.
`
`Claim 11 comprises, among other things, “displaying … the projected inner
`
`layer being having the altered color gradient.” Ex. 1001, 20:23-28. Medivis
`
`
`
`12
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`contends that Novarad failed to prove that it was clerical error. Reply, 13.
`
`Petitioner’s contention lacks merit. Petitioner cites 35 USC §255 in support. But
`
`that statute only requires that a correction not involve changes that “would
`
`constitute new matter or would require re-examination.” The change from “being
`
`having” to “having” would not constitute new matter and would not require
`
`reexamination. More importantly, all the experts agreed that “being having” is
`
`clerical error. See Ex. 2002, ¶ 83; Ex. 2004, ¶ 91; Ex. 1012, ¶ 34.
`
`Medivis also asks the Board to interpret being having as “being or having,”
`
`which results in two possible statements:
`
`1. “displaying the projected inner layer being the altered color gradient;” and
`
`2. “displaying the projected inner layer having the altered color gradient.”
`
`Only the second sentence, using the term “having,” makes any sense.
`
`VI. DOO DOES NOT ANTICIPATE CLAIMS 1, 5, AND 6.
`A. Doo Does Not Anticipate Claim 1.
`
`Medivis cherry picks portions of different embodiments from Doo and
`
`arranges them, using hindsight, in an attempt to arrive at the challenged claims.
`
`The Federal Circuit has explicitly rejected this approach. In Net MoneyIn, Inc. v.
`
`Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008), the Federal Circuit reversed a
`
`district court’s anticipation finding because the defendant did not demonstrate that
`
`the reference disclosed the limitations “arranged as in the claim.” Id. The claimed
`
`
`
`13
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`system comprised five links, and the district court found the invention anticipated
`
`by a reference disclosing all five links. Id., 1368-69. The Federal Circuit reversed,
`
`concluding that the district court “wrong[ly] combine[d] parts of [two] separate
`
`protocols,” each of which included some of the claimed links. Id., 1371. The
`
`court explained that the differences in embodiments “invoke the question of
`
`obviousness, not anticipation.” Id. Medivis’ anticipation argument does the same
`
`thing here when it attempts to combine teachings from different “modalities” in
`
`Doo. As such, its argument should be disregarded.
`
`Medivis’ improper rearrangement aside, Doo still does not disclose all the
`
`elements of claim 1.
`
`i.
`
`Doo does not disclose “3D data … including an outer layer
`… and multiple inner layers.”
`
`Medivis argues that “Doo’s Figure 11 … illustrates 3D data, including an
`
`outer layer and multiple inner layers of the patient.” Reply, 15.
`
`
`
`
`
`14
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`But “Figure 11 illustrates the application of a fifth three-dimensional modality, ‘fly
`
`through 3D’ in which a series of three-dimensional tomographic slices can be
`
`sequentially exhibited. Each tomographic slice can be a distinct image.”
`
`Ex. 1008, ¶ [0078] (emphasis added). Unlike Doo, the “3D data” of claim 1 is not
`
`“sequentially exhibited” like a flipbook. It is also not limited to one axis, like a
`
`sequential exhibition would be. Rather, the “3D Data” of the ’271 Patent is an
`
`immersive 3D volume—navigable along any axis. See supra, 6, 9. Importantly,
`
`Fig. 11 of Doo is never disclosed as being projected onto the patient. Rather, it is
`
`simply there to “allow a surgeon to gain an understanding of the patient’s internal
`
`anatomy.” Ex. 1008, ¶ 74.
`
`ii.
`
`Doo does not disclose “displaying … one of the inner layers
`of the patient from the 3D data.”
`
`Medivis contends that “Doo’s Figures 2 and 3 … show that the ‘projected
`
`
`
`display may be inner layers of the patient from the 3D data.’” Reply, 16. Doo
`
`projects conventional 2D images and modified 2D images onto or hovering above
`
`a patient. For example, in FIG. 2 of Doo a 2D image is projected so as to appear
`
`hovering over the patient.
`
`
`
`15
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`
`
`
`
`Medivis also argues that there is no real distinction between the image 132
`
`in FIG 3 and the bones 106b in FIG. 1 of the ’271 Patent. Reply, 16. For the
`
`Board’s convenience, both figures are copied below side-by-side.
`
`
`
`
`
`Medivis is incorrect. The “3D data” of the ’271 Patent is a 3D volume confined
`
`within a virtual 3D box. The ’271 Patent illustrates bones 106b in FIG. 1 merely
`
`as one example of the many inner layers available and visible within the 3D
`
`dataset, including, “but not limited to, … muscles, organs, or fluids of the patient
`
`106.” Ex. 1001, 12:1-4. In contrast, there is no indication in Doo that image 132
`
`
`
`16
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`in FIG. 3 is a 3D volume including “an outer layer … and multiple inner layers
`
`of the patient,” as recited in claim 1. Rather, it is simply a single skeletal surface
`
`model. See Ex. 2002, Mul.Dec., ¶ 103 (“…Figure 3 shows only a bone model…”).
`
`iii.
`
`Doo does not disclose “being confined within a virtual 3D
`shape.”
`
`Providing no expert rebuttal to Novarad’s experts, Medivis repeats its same
`
`
`
`argument from its Petition that “Doo’s shape 532 in Figure 9 and shape 432 in
`
`Figure 7 are virtual 3D shapes.” Reply, 18. Figures 7 and 9 of Doo are copied
`
`below.
`
`
`
`
`
`17
`
`
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`Contrary to Medivis’ argument, “a POSITA would understand that Figures 7 and 9
`
`show only a curved [2D] image.” Ex. 2004, Ros.Dec., ¶ 123. “On its face, this is
`
`not 3D data.” Mul.Dec., ¶ 107.3
`
`
`
`Medivis also argues again that Doo’s FIG. 11 discloses a “virtual 3D shape”
`
`after Doo’s series of slices are fused together. Reply, 18.
`
`
`
`However, “the rectangles surrounding and the dashed lines connecting each slice
`
`are only meant to illustrate an alignment of the representative slices.” Ex. 2002,
`
`Mul.Dec., ¶ 110. “[E]ven if the projection of the stack created a box … the
`
`resultant box would be static.” Ex. 2004, Ros.Dec., ¶ 128. In short, Doo’s Figure
`
`11 also does not and cannot confine a 3D volume. See PO Response, 30-31.
`
`
`
`
`
`
`3 Within that vein, callout 432 in FIG. 7 and 532 in FIG. 9 of Doo are not capable
`of confining “the projected inner layer of the patient from the 3D data ... within a
`volume of a virtual 3D shape,” as recited in claim 1. See PO Response, 28-30.
`18
`
`
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`B. Doo Does Not Anticipate Claims 5 and 6.
`
`For the first time on Reply, Medivis contends that because Doo can adjust
`
`the opacity of a projected image until the image is fully transparent that Doo
`
`teaches “hiding the lines of the 3D shape.” Reply, 18. Its belated argument lacks
`
`merit. Medivis conflates the projected 3D data with the 3D shape confining it.
`
`According to Medivis, FIG. 11 discloses the lines of the 3D shape, separate and
`
`apart from the 3D data (i.e., the patient image). But now it contends that adjusting
`
`the opacity of the image is the same as hiding the lines of the 3D shape. Medivis
`
`cannot have it both ways.
`
`VII. CLAIMS 1-6 AND 11-20 ARE NOT OBVIOUS IN VIEW OF DOO
`AND AMIRA.
`
`A. No Motivation to Combine Doo and Amira.
`
`“A party that petitions the Board for a determination of obviousness must
`
`show that ‘a skilled artisan would have been motivated to combine the teachings of
`
`the prior art references to achieve the claimed invention, and that the skilled artisan
`
`would have had a reasonable expectation of success in doing so.’” Apotex Inc. v.
`
`Wyeth LLC, IPR2014-00115, Paper 94, slip op. at 11 (Apr. 20, 2015)
`
`(quoting Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994
`
`(Fed. Cir. 2009)). Medivis has not carried its burden here.
`
`
`
`19
`
`

`

`Case IPR 2023-00042
`Patent 11,004,271 B2
`
`
`Medivis contends that t