Trials@uspto.gov Paper 11
`571.272.7822
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` Date: June 16, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`SPACETIME3D, INC.,
`Patent Owner.
`____________
`
`IPR2023-00242
`Patent 8,881,048 B2
`____________
`
`
`
`Before HUBERT C. LORIN, DAVID C. McKONE, and
`MINN CHUNG, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
` Date: June 16, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`SPACETIME3D, INC.,
`Patent Owner.
`____________
`
`IPR2023-00242
`Patent 8,881,048 B2
`____________
`
`
`
`Before HUBERT C. LORIN, DAVID C. McKONE, and
`MINN CHUNG, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
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`
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`IPR2023–00242
`Patent 8,881,048 B2
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`A. Background
`
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`inter partes review of claims 1–18 of U.S. Patent No. 8,881,048 B2
`(Ex. 1001, “the ’048 patent”). SpaceTime3D, Inc. (“Patent Owner”) filed a
`Preliminary Response (Paper 6, “Prelim. Resp.”). Petitioner also filed a
`Preliminary Reply (Paper 7, “Prelim. Reply”) and Patent Owner filed a
`Preliminary Sur-reply (Paper 8, “Prelim. Sur-reply”).1
`We have jurisdiction under 35 U.S.C. § 6.
`Upon consideration of the arguments and evidence presented by
`Petitioner, we are persuaded that Petitioner has demonstrated, under
`35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing
`the unpatentability of at least one challenged claim.
`For the reasons stated below, we institute inter partes review as to
`challenged claims 1–18 of the ’048 patent.
`
`B. Related Proceedings
`
`Petitioner indicates, and Patent Owner agrees, that the ’048 patent is
`being asserted in SpaceTime3D, Inc. v. LG Electronics Inc., No. 2:22-cv-
`00049 (E.D. Tex. 2022) and SpaceTime3D, Inc. v. Apple Inc., No. 6:22-cv-
`00149 (W.D. Tex. 2022) (“District Court Action”). Pet. 92; Paper 3.
`
`
`1 The Board authorized the filing of these papers. See Ex. 3001. The Board
`also authorized Petitioner to file a Sotera stipulation. See Ex. 1053, 17:21–
`18:1; Ex. 1054.
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`Petitioner and Patent Owner also indicate that the ’048 patent was
`involved in SpaceTime3D, Inc. v. Samsung Electronics Co., No. 2:19-cv-
`00372 (E.D. Tex.), which has terminated, and IPR2020-01417, in which the
`petition was dismissed prior to institution. Pet. 92; Paper 3.
`
`C. The ’048 patent (Ex. 1001)
`
`1. Disclosure
`
`The ’048 patent, titled “System and Method for Providing Three-
`
`Dimensional Graphical User Interface,” relates to “a three-dimensional
`(‘3D’) interactive computing interface and sorting interface comprising
`information from real-time and static sources, including . . . meta search
`results from the Web.” Ex. 1001, code (54), 1:30–33.
`
`The ’048 patent addresses the problem of finite space on a computer’s
`desktop interface whereby “elements of the GUI[2] (the windows) are
`typically drawn on top of each other such that the GUI components overlap
`one another.” Ex. 1001, 2:8–10. The ’048 patent notes that “[w]e live in a
`3D . . . world” and the “notion of expressing depth or time in a visual
`computer metaphor is important for the creation of a visual history of the
`end user’s computing sessions.” Id. at 2:14–20. Accordingly, the ’048
`patent observes the potential to create “a virtual space that does not overlap
`or substitute what exists on the finite desktop,” and proposes “an improved
`graphical user interface that allows the user to efficiently navigate through a
`virtual space wherein groups of windows can be easily organized, stored,
`and retrieved.” Id. at 2:20–24, 2:40–43.
`
`
`2 Graphical User Interface (“GUI”).
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`“The invention provides a Graphical User Interface (GUI) that uses
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`the two-dimensional display of an end user’s computer to display
`information (e.g., webpages and other information mapped onto 3D objects)
`in a simulated real-time 3-D immersive Cartesian space.” Ex. 1001, 7:59–
`63. “The 3D GUI program creates the appearance of a 3-D space within a
`2-D window on the desktop of a computer . . . .” Id. at 7:66–67. This is
`depicted in Figure 10, reproduced below.
`
`
`Figure 10 of the ’048 patent shows a simulated 3-D virtual space 300
`displayed within a 2-D window. Ex. 1001, 6:30–31; 17:64.
`“The program creates what seems to be an infinite simulated 3-D Cartesian
`space within the two-dimensional display . . . [and] creates interactivity of
`the simulated real-time 3-D immersive Cartesian space.” Id. at 8:6–20.
`
`Figure 11 of the ’048 patent depicts “an embodiment of a 3D GUI
`application window with an opened database module” (Ex. 1001, 6:32–33),
`and is reproduced below.
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`Figure 11 of the ’048 patent shows a virtual space 300 along with an
`interface 440 called a compass or database module. Ex. 1001, 9:66–
`10:4.
`Figure 11 shows compass or database module 440 “located to the left of the
`display of the virtual space 300.” Id. at 10:2–4. Compass 440 includes
`names of viewpoints in virtual space 300 where the “names constitute a map
`of the 3D space as well as a method to navigate the map.” Id. at 10:7–11. In
`the example shown in Figure 11, when a “tab called Web Browsers 453” in
`the application is selected, compass 440 lists “the names of four viewpoints
`of the webpages (shown in the main window or virtual space) . . . whose
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`viewpoint names as they relate to the compass (and are listed as such) are
`‘http://www.yahoo.com—Yahoo!’ 442, ‘http://www.google.com—Google’
`443, ‘http://www.ebay.com—ebay’ 444 and ‘http://www.msn.com—MSN’
`445.” Id. at 10:34–48. At the bottom of the virtual space in the Figure 11
`embodiment “there is provided a linear map, called a timeline 340, having a
`plurality of icons (502, 504, 506, 508),” which “represent viewpoints
`indexed in the compass 440 and correspond to the windows 510, 512, 514,
`518, respectively.” Id. at 10:11–16. As shown in Figure 11, windows 510,
`512, 514, and 518 are displayed three-dimensionally above the timeline
`icons. “[E]ach 3D icon (502, 504, 506, 508) is a hyperlink or graphic that
`jumps to a new location or viewpoint (when clicked).” Id. at 11:47–49.
`Figure 13B of the ’048 patent depicts “another embodiment of a 3D
`GUI application window with an opened database module” (Ex. 1001, 6:37–
`38), and is reproduced below.
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`Figure 13B of the ’048 patent shows an example of clicking a name in
`compass 440 to present a favorable viewpoint of a webpage in the
`virtual space. See id. at 21:5–19.
`As shown in Figure 13B, in which search tab 454 is selected, clicking on one
`of the “indexed names (viewpoints)” in explorer pane 441 “brings a
`favorable viewpoint/perspective of the output for this particular webpage in
`the 3D virtual space to the end user’s view.” Id. at 21:5–12. In this way,
`each name indexed in the explorer pane of the window (compass or data
`base module 440) . . . serves both as an index of the search results . . .
`as well as a hyperlink or trigger to a favorable viewpoint within the 3D
`virtual space of each webpage within the search results.
`Id. at 21:12–19.
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`The ’048 patent notes, however, that an end user may “occupy[] an
`
`unfavorable viewpoint in the virtual space where objects are drawn in
`skew,” therefore making it “difficult to interact with a file.” Ex. 1001,
`21:20–24. In this case, a “heads-up display” feature allows for clicking an
`icon to “trigger[] a change to the viewpoint of the end user within the virtual
`space . . . thereby making it easier to interact with.” Id. at 21:29; 21:39–45.
`This may be “accomplished by revealing the 2D version of the webpage that
`was initially hidden or drawn off screen and positioning it in a layer that is in
`front of the 3D virtual space such that the end user can interact with this
`layer in 2D.” Id. at 21:45–49. Further, “an end user can toggle or switch
`between 2D and 3D for any selectively captured computing output and
`information . . . that was drawn within a 3D virtual space.” Id. at 21:54–58.
`
`2. Claims 1–18
`
`Petitioner challenges claims 1–18. Pet. 1.
`Claims 1, 8, and 14 are the independent claims. Claim 1 is illustrative
`and is reproduced below. We add bracketing similar to Petitioner’s
`annotations to assist in referring to the claim elements. Pet. i–ii.
`1. [1pre] A method for providing a three-dimensional (3D) graphical
`user interface, comprising:
`
`[1a] receiving at least first and second inputs from an end user;
`[1b] receiving first and second webpages from at least one server
`in response to said first and second inputs, wherein the first and second
`inputs are website addresses corresponding to said first and second
`webpages, respectively;
`[1c] displaying at least a portion of the first webpage on a first
`object within a 3D space, and at least a portion of the second webpage
`on a second object within the 3D space, comprising;
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`[1ci] rendering the first and second webpages;
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`[1cii] capturing first and second images of the at least a
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`portion of the first webpage and the at least a portion of the
`second webpage, respectively; and
`
`[1ciii] texturing the first image on the first object and the
`second image on the second object, the first object being
`displayed in a foreground of the 3D space and the second object
`being displayed in a background of the 3D space; and
`[1d] displaying additional information, comprising:
`[1di] receiving an interaction by the end user on the first
`image;
`
`[1dii] replacing the first and second objects within the 3D
`space with a window within a two-dimensional (2D) space in
`response to receiving the interaction, wherein the window
`includes the rendered first webpage;
`[1diii] receiving an interaction by the end user on a link
`provided in the rendered first webpage, the link corresponding to
`the additional information;
`
`[1div] rendering the additional information; and
`
`[1dv] displaying the rendered additional information in
`said window within the 2D space.
`Ex. 1001, 37:48–38:16.
`
`
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`D. Asserted References
`
`Petitioner relies on the following references:
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`Gralla
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`Sauve
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`Tsuda
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`Name
`Reference
`Gettman U.S. Patent Application Publication No.
`2005/0086612 A1, published Apr. 21, 2005
`PRESTON GRALLA, HOW THE INTERNET WORKS (6th
`ed. 2002)
`Robertson U.S. Patent No. 6,414,677 B1, issued July 2, 2002
`U.S. Patent Application Publication No.
`2006/0230356 A1, published Oct. 12, 2006
`U.S. Patent No. 6,577,330 B1, issued June 10, 2003 1008
`
`Ex. No.
`
`1006
`
`1005
`
`1004
`
`1007
`
`Petitioner also relies on the Declaration of Dr. Henry Fuchs (Ex. 1003,
`“Fuchs Decl.”) and the prosecution file of the ’048 patent (Ex. 1002) as
`support for various contentions.
` Patent Owner relies, inter alia, on the Declaration of Eddie Bakhash,
`President and founder of SpaceTime3D, Inc., and the inventor named on the
`’048 patent, as support for various contentions. Ex. 2001 (“Bakhash Decl.”);
`Ex. 1001, code (76).
`
`E. Asserted Grounds
`
`Petitioner contends that claims 1–18 of the ’048 patent are
`unpatentable under the following grounds:
`
`
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`Ground
`
`Claims
`Challenged
`
`
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`35 U.S.C. §
`
`Reference(s)/Basis
`
`1–18
`1–18
`
`§ 103(a)3
`§ 103(a)
`
`Robertson, Gralla, Gettman
`Sauve, Tsuda
`
`I
`II
`
`Pet. 3.
`
`II. ANALYSIS
`
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`
`Patent Owner requested that we exercise our discretion to deny
`institution under § 314(a) due, inter alia, due to the advanced state of the
`District Court Action. See Prelim. Resp. 3–8.
`However, if Petitioner has provided a Sotera4 stipulation, we will not
`discretionarily deny institution under § 314(a) in view of a District Court
`action. See Director Memorandum, Interim Procedure for Discretionary
`Denials in AIA-Post Grant Proceedings With Parallel District Court
`Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director
`Memo”), at 3, 7, 9.
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’048 patent have an effective filing date before the effective date of
`the applicable AIA amendments, we refer to the pre-AIA version of
`35 U.S.C. § 103 throughout this Decision.
`
` Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB
`Dec. 1, 2020) (precedential, designated Dec. 17, 2020).
`
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`The Board authorized Petitioner to file a Sotera stipulation.5
`Petitioner subsequently filed a Sotera stipulation which presents, in
`part, that:
`Apple hereby stipulates that if the PTAB institutes IPR2023-00242
`based on the grounds and claims listed in the tables in Appendix A,
`Apple will not pursue for the instituted claims, in the District Court
`proceedings, the grounds asserted in the IPR2023-00242 petition or
`any other ground that could have been reasonably raised in an IPR.
`Sotera Wireless, Inc. v. Masimo Corp., Case IPR2020-0109, Paper 12
`(PTAB Dec. 1, 2020).
`In so stipulating, Apple seeks to minimize the overlap of issues
`and avoid multiple proceedings addressing the validity of the
`challenged claims based on the same grounds. Rather, through this
`stipulation, Apple expresses its intention to have only the PTAB
`address any Instituted Grounds of invalidity of claims 1–18 of the ’048
`Patent.
`Ex. 1054, 1 (emphasis added).
`
`The Director Memo states that “the PTAB will not discretionarily
`deny institution in view of parallel district court litigation where a petitioner
`presents a stipulation not to pursue in a parallel proceeding the same grounds
`or any grounds that could have reasonably been raised before the PTAB.”
`Director Memo at 3.
`Since Petitioner’s stipulation presents that Petitioner “will not pursue
`for the instituted claims, in the District Court proceedings, the grounds
`asserted in the IPR2023-00242 petition or any other ground that could have
`been reasonably raised in an IPR” (Ex. 1054) and because this satisfies the
`condition for the PTAB not to discretionarily deny institution in view of
`
`5 See supra n.1.
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`parallel district court litigation as stated in the Director Memo (id. at 3), we
`determine that discretionary denial of the Petition under 35 U.S.C. § 314(a)
`is unwarranted under the circumstances of this case.
`
`B. Discretionary Denial Under 35 U.S.C. § 325(d)
`
`Patent Owner requests that the Board exercise its discretion to deny
`institution under § 325(d). Prelim. Resp. 32–41.
`Section 325(d) provides that the Director may elect not to institute a
`proceeding if the challenge to the patent is based on matters previously
`presented to the Office. 35 U.S.C. § 325(d) states, in pertinent part, that
`“[i]n determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or substantially
`the same prior art or arguments previously were presented to the Office.”
`
`The Board uses a two-part framework for evaluating arguments under
`§ 325(d):
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the same
`arguments previously were presented to the Office; and
`(2) if either condition of first part of the framework is satisfied, whether
`the petitioner has demonstrated that the Office erred in a manner
`material to the patentability of challenged claims.
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`(“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful
`insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9
`(footnote omitted). The non-exclusive Becton, Dickinson factors are:
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`(a) the similarities and material differences between the asserted art and
`the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art evaluated
`during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for rejection;
`(d) the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the prior art
`or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the Examiner
`erred in its evaluation of the asserted prior art; and
`(f) the extent to which additional evidence and facts presented in the
`Petition warrant reconsideration of the prior art or arguments.
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
`paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and
`(d) relate to the first part of the Advanced Bionics framework (whether the
`same or substantially the same art or arguments previously were presented to
`the Office), and Becton, Dickinson factors (c), (e), and (f) relate to the
`second part of that framework (previous Office error). Advanced Bionics,
`Paper 6 at 9–11. Only if the same or substantially the same art or arguments
`were previously presented to the Office do we then consider whether the
`petitioner has demonstrated a material error by the Office. Id.
`
`Under § 325(d), the art or arguments must have been previously
`presented to the Office during proceedings, such as examination of the
`underlying patent application, pertaining to the challenged patent. Advanced
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`Bionics, Paper 6 at 7. Previously presented art includes art made of record
`by the Examiner, and art provided to the Office by an applicant, such as on
`an Information Disclosure Statement (“IDS”), in the prosecution history of
`the challenged patent. Id. at 7–8.
`
`1. First step of the framework
`
`Patent Owner contends, inter alia, that “th[is] petition should be
`rejected because it proposes invalidity grounds based on prior art and
`arguments identical or cumulative to those previously before the USPTO.”
`Prelim. Resp. 33.
`As a preliminary matter, the Examiner did not apply the references
`(i.e., Robertson, Gralla, Gettman) of Ground I or Sauve of Ground II and
`Patent Owner does not indicate, nor does there appear to be any indication in
`the record, that the Examiner considered these references. See generally
`Prelim. Resp. 54–57; Ex. 1002. The Examiner also did not apply Tsuda, the
`other Ground II reference, although there are two PTO-1449 Information
`Disclosure Statements in the record listing Tsuda. Ex. 1002, 200, 255. But
`even there the Examiner did not initial the forms to indicate that Tsuda was
`considered. Id.
`Be that as it may, the claims subject to the proposed grounds are not
`the same as those that were subject to rejections based on prior art
`previously before the USPTO. As Petitioner states, “[t]he examiner never
`rejected the Challenged Claims during prosecution.” Pet. 87 (citing
`Ex. 1002).
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`An Amendment was filed on June 27, 2014, cancelling claims 1–66
`and adding claims 67–88. Ex. 1002, 55. Claims 66–88 newly included
`“interaction” and “replacing” steps, among other limitations. Id. at 56.
`Appellant discussed the “interaction” steps in the Remarks
`accompanying the Amendment:
`For example, Claim 67 is directed toward a method of interacting
`with a webpage (e.g., a two-dimensional webpage) that is being
`displayed in a three-dimensional space. Claim 67 accomplishes
`this, in part, by rending a first webpage, capturing an image of
`the first webpage, and texturing the image on a first object so that
`it can be displayed (with other objects) in 3D space. The user can
`then navigate through the plurality of objects that are being
`displayed in 30 space. If the user interacts with the first object
`(i.e., the image of the first webpage), then a windowed version
`of the first webpage is presented to the user, thereby allowing the
`user to navigate the webpage in a more traditional fashion.
`Ex. 1002, 63–64 (emphasis added). On that basis the Examiner allowed the
`claims. Ex. 1002, 31.
`
`The “replacing” step however was not mentioned either by Appellant
`or the Examiner. See generally Ex. 1002.
`
`Petitioner and Patent Owner now present arguments relative the
`“replacing” step. Pet. 39–42; Prelim. Resp. 41–50. These arguments are
`new because no arguments were previously presented to the Office for this
`step. Additionally, Petitioner supports these arguments with the testimony
`of Dr. Fuchs, which the Examiner did not consider. Ex. 1003 ¶¶ 123–127.
`There is no overlap between the arguments made during examination
`and the manner in which Petitioner relies on Robertson, Gralla, Gettman,
`Sauve, and Tsuda for this step. Cf. Becton, Dickinson factor (d).
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`There is also no overlap between the arguments made during
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`examination and the manner in which Patent Owner distinguishes the prior
`art. Cf. Becton, Dickinson factor (d). The “replacing” step is central to
`Patent Owner’s argument distinguishing the claims over the references. See
`e.g., Prelim. Resp. 41–42:
`The ’048 Patent provides for a different sequence of events [for the
`references] —events involving the switching, back-and-forth, between
`2D and 3D space, and replacing images in 3D space with a single,
`active webpage in 2D space, where the webpage is selected based on
`the interaction with one of the plurality of images.
`Emphasis added. This is not an argument identical or cumulative to any
`previously before the USPTO.
`Moreover, even assuming, as Patent Owner alleges, that the individual
`Robertson, Gralla, Gettman, and Sauve references are substantially similar
`to other prior art references cited by (or to) the Examiner, the Examiner did
`not consider combinations the same as, or similar to, those presented by
`Petitioner. Prelim. Reply 2–4. In the Preliminary Sur-reply, Patent Owner
`purports to identify “several combinations including ones similar to
`Robertson and Gettman” and “ones similar to Suave and Tsuda,” but does
`not meaningfully explain these arguments. Prelim. Sur-reply 4. In any case,
`we find that those combinations are not substantially the same as the
`combinations presented in the Petition.
`For the reasons discussed, we find the arguments are not the same or
`substantially the same as was previously presented to the Office.
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`2. Second step of the framework
`
`Because the same or substantially the same arguments were not
`previously presented to the Office, we do not consider whether Petitioner
`has demonstrated a material error by the Office. See Advanced Bionics,
`Paper 6 at 9–11.
`
`3. Conclusion Regarding § 325(d)
`
`Under the circumstances of this case, we determine that exercising
`discretion to deny the Petition under § 325(d) is unwarranted.
`
`C. Principles of Law for Patentability
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, “would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and
`the prior art; (3) the level of ordinary skill in the art; and (4) when in
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`evidence, objective evidence of nonobviousness. Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).6
`“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 the challenge to each claim”)). The burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`
`D. Level of Ordinary Skill in the Art
`
`
`
`Petitioner contends:
`
`The range of qualifications for a POSITA [person of
`ordinary skill in the art] would have included a bachelor’s degree
`in computer science or a comparable field and at least two years
`of professional experience working with 2D and 3D graphical
`user interfaces. Additional years of experience could substitute
`for an advanced-level degree (and vice versa).
`Pet. 13 (citing Fuchs Decl. ¶¶ 28–29) (citations omitted). Patent Owner
`states that “at least the inventor of the ’048 Patent, E. Eddie Bakhash, is a
`
`
`6 We recognize that “the strength of each of the Graham factors must be
`weighed in every case and must be weighted en route to the final
`determination of obviousness or non-obviousness.” WBIP, LLC v. Kohler
`Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). This includes objective indicia
`of nonobviousness. To that end, we evaluate Patent Owner’s objective
`indicia in Section II.I below, and find that evidence unpersuasive on the
`preliminary record.
`
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`POSITA, and reserves the right to further address this issue at a later point in
`time if necessary.” Prelim. Resp. 18–19.
`Petitioner’s proposed definition of a person of ordinary skill in the art
`appears reasonable, and we adopt that definition for our analysis in this
`decision.
`That being said, we see no reason why the level of ordinary skill in
`the art is not adequately reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`E. Claim Construction
`
`For petitions filed on or after November 13, 2018,
`[claims] of a patent . . . shall be construed using the same claim
`construction standard that would be used to construe the [claims] in a
`civil action under 35 U.S.C. § 282(b), including construing the [claims]
`in accordance with the ordinary and customary meaning of such claims
`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); see also Phillips v. AWH Corp., 415 F.3d
`1303, 1312–14 (Fed. Cir. 2005) (en banc).
`The parties agree that the claim terms “3D space” and “two-
`dimensional (2D) space” should be construed as “a virtual space defined by
`a three-dimensional coordinate system” and “a finite graphical area defined
`by a two-dimensional coordinate system,” respectively. Pet. 13–14; Prelim.
`Resp. 19–20 (emphasis omitted) (citing Ex. 2010, 7–19).
`Petitioner submits that “texturing” should be construed as “drawing or
`mapping an image onto a 3D object,” although Petitioner asserts that “the
`parties’ dispute [over this term] does not impact the merits of the Petition
`
`20
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`and, thus, need not be resolved by the Board.” Pet. 13–14. Patent Owner
`asserts that “the Board need not construe this term,” “because the prior art
`cited by Petitioner is so thoroughly deficient that the texturing limitation
`becomes largely irrelevant.” Prelim. Resp. 20.
`At this stage of the proceeding, it is unnecessary for us to address
`Petitioner’s proposed constructions for the two limitations in order to resolve
`any of the patentability disputes. Only those terms that are in controversy
`need to be construed, and only to the extent necessary to resolve the
`controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999).
`
`F. Overview of the Prior Art References
`
`1. Gettman (Ex. 1006)
`
`Gettman relates to “a method of organizing and displaying a large
`
`volume of material content in a manner that can be easily browsed and
`accurately navigated by a viewer.” Ex. 1006 ¶ 44.
`Figure 1, reproduced below, depicts “a diagram of a screen display
`generated by one embodiment of an information display method.” Id. ¶ 9.
`
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`Figure 1 of Gettman shows virtual street 2 with buildings 3 having
`virtual display windows 4.
`Gettman’s Figure 1 shows “an image of a virtual street 2 seen in
`three-dimensional perspective from the middle of the street,” where
`“[b]uildings 3 are located on each side of the street 2, and each has one or
`more virtual display windows 4 facing the street 2.” Ex. 1006 ¶ 76. Each
`window 4 may show content from “an Internet HTML page,” and “[t]hese
`may be the home pages of commercial concerns or pages specifically
`generated for display in this format.” Id. “As a viewer ‘moves’ along the
`street, distant windows come into view and close-by ones pass out of sight
`‘behind’ the viewer,” with “the program carefully select[ing] the set of
`
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`HTML pages to cache and store in memory to ensure a smooth and fast
`appearance of rendered display windows.” Id. ¶ 84. However, in one
`example, a “page is not rendered dynamically until the viewer turns toward
`it (and ‘clicks’ on it or remains in that position for a set period of time), at
`which stage the dynamically cached page may be displayed in a two-
`dimensional, conventional-style browser display box.” Id. ¶ 83.
`
`2. Gralla (Ex. 1005)
`
`
`
`Gralla is a book titled “How the Internet Works,” and is aimed at
`
`professionals and novices alike. See Ex. 1005, 12. In a section titled “How
`the World Wide Web Works,” Gralla explains the basics of how a Web
`browser sends a URL request in order to retrieve a page, document, or object
`from a Web server. Id. at 134.
`
`3. Robertson (Ex. 1004)
`
`Robertson relates to “[a] graphical user interface in which object
`thumbnails are rendered on a simulated three-dimensional surface which (i)
`exploits spatial memory and (ii) allows more objects to be rendered on a
`given screen.” Ex. 1004, code (57).
`Figure 8A of Robertson, reproduced below, depicts “an exemplary
`display of web page thumbnails using the user interface of the present
`invention.” Ex. 1004, 8:4–5.
`
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`Figure 8A of Robertson shows display 800 with inclined plane 802
`having object thumbnails 806.
`In Robertson’s Figure 8A, display 800 illustrates inclined plane 802 as
`having “low resolution images . . . or object thumbnails 806,” where “object
`thumbnails 806 represent web (or hypertext markup language or ‘HTML’)
`pages.” Ex. 1004, 12:58–65.
`
`Figure 9, reproduced below, depicts “an exemplary display showing a
`selected web page using the user interface of the present invention.”
`Ex. 1004, 8:9–10.
`
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`Figure 9 of Robertson shows display 900 with a selected object
`thumbnail 902.
`In Robertson’s Figure 9, a selected object thumbnail 902 in
`display 900 may be “displayed in a preferred viewing position, in this case,
`at the center foreground of the three-dimensional environment.” Ex. 1004,
`13:58–62. Here, “selected object thumbnail 902 is a high resolution bit
`map,” which may be an instance of a browser application “rendering a web
`page, with the user interface of the present invention in the background.” Id.
`at 13:62–14:4.
`
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`4. Sauve (Ex. 1007)
`
`
`
`Sauve relates to browsing software that “provide[s] a quick pick user-
`
`interface that visually displays the several tabs” open in a tabbed browser
`window. Ex. 1007 ¶ 6.
`Figure
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