Case: 23-1011 Document: 35 Page: 1 Filed: 02/20/2024
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
D3D TECHNOLOGIES, INC.,
Appellant
v.
MICROSOFT CORPORATION,
Appellee
______________________
2023-1011
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00647.
______________________
Decided: February 20, 2024
______________________
TAREK N. FAHMI, Ascenda Law Group, PC, San Jose,
CA, argued for appellant.
NITIKA GUPTA FIORELLA, Fish & Richardson P.C., Wil-
mington, DE, argued for appellee. Also represented by
AAMIR ABDULQADER KAZI, Atlanta, GA; BETTY H. CHEN,
Desmarais LLP, San Francisco, CA.
______________________
Before PROST, SCHALL, and REYNA, Circuit Judges.
Case: 23-1011 Document: 35 Page: 2 Filed: 02/20/2024
2 D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
PROST, Circuit Judge.
D3D Technologies, Inc. (“D3D”) appeals from a final
written decision of the Patent Trial and Appeal Board
(“Board”) in an inter partes review determining that claims
1–21 of U.S. Patent No. 8,384,771 (“the ’771 patent”) are
unpatentable. We affirm.
BACKGROUND
D3D owns the ’771 patent, titled “Method and Appa-
ratus for Three Dimensional Viewing of Images.” ’771 pa-
tent col. 1 ll. 1–2. The ’771 patent describes “a process for
combining slices generated by medical imaging devices to
create a volume of interest and then presenting this volume
in a three-dimensional representation to a Head Display
Unit (HDU),” so that a user, such as a radiologist or other
medical professional, “can obtain a holistic view” of a pa-
tient. Id. at col. 4 ll. 59–64. The user “is afforded control
over options designed to enhance the viewing process,”
such as “rotating the image, selectively filtering out items
(e.g., tissues), adding a color schematic, and zooming in or
out.” Id. at col. 9 ll. 28–32.
Independent claim 1 is representative and recites:
1. A method of three-dimensional viewing of im-
ages by a user comprising:
selecting a volume of interest from a collection of
image slices;
arranging said slices corresponding to said volume
of interest;
selecting an initial viewing angle of said slices;
...
selecting items of said image to be filtered, wherein
said selecting items of said image to be filtered
comprises:
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D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION 3
selecting items of said image to be subtracted from
said image to produce a filtered image;
displaying, in said HDU, a filtered image for said
left eye based on said initial viewing angle, said
view point for said left eye and said volume of in-
terest; and
displaying, in said HDU, a filtered image for said
right eye based on said initial viewing angle, said
view point for said right eye, and said volume of in-
terest and wherein said filtered image for said left
eye and said filtered image for said right eye pro-
duce a filtered three-dimensional image to said
user.
’771 patent claim 1 (emphasis added). We refer to the lan-
guage emphasized above as the “subtracted limitation.”
Dependent claim 6 additionally recites in relevant
part:
6. The method of claim 4 wherein said selecting
items of said image to be colored comprises:
sorting voxels of said items by a property of said
voxel;
applying colors to groups of sorted voxels to obtain
a colored image; . . . .
’771 patent claim 6 (emphasis added).
Microsoft Corporation (“Microsoft”) filed a petition for
inter partes review of claims 1–21 of the ’771 patent. In a
final written decision, the Board found the challenged
claims anticipated by and obvious over WO 2007/059477
(“Murphy”). Microsoft Corp. v. D3D Techs., Inc., No.
IPR2021-00647, 2022 WL 3137967, at *1 (P.T.A.B. Aug. 3,
2022) (“Final Written Decision”).
The Board began by construing the term “subtracted”
as used in the subtracted limitation. The Board noted that
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4 D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
the specification does not define the term “subtracted” and
construed that term to mean “withdrawn or taken away, as
a part from a whole.” Id. at *6.
Turning to the prior art, the Board noted that D3D dis-
puted only whether Murphy disclosed the subtracted limi-
tation but did not otherwise contest Microsoft’s showing
with respect to other limitations. Id. at *7. The Board
found that Murphy describes a display system that can vir-
tually display “data representing human anatomy” and
that Murphy discloses the ability to hide and show anatom-
ical features. Id. at *7–8. The Board concluded that “Mur-
phy’s hiding, cutting away, and making items completely
transparent teaches withdrawing or taking away items
from an image.” Id. at *8. The Board therefore held that
under its construction of “subtracted” Murphy discloses the
subtracted limitation and that claim 1 is anticipated by and
would have been obvious over Murphy. Id. The Board ad-
ditionally concluded that because Murphy discloses “apply-
ing colors to groups of sorted voxels to obtain a colored
image,” it anticipated and would have rendered obvious de-
pendent claim 6 and, similarly, claims 13 and 20. Id. at
*9–10.
D3D appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review the Board’s claim construction de novo and
any subsidiary factual findings based on extrinsic evidence
for substantial evidence. Apple Inc. v. MPH Techs. Oy, 28
F.4th 254, 259 (Fed. Cir. 2022). We “review the Board’s
legal conclusions of obviousness de novo and factual find-
ings for substantial evidence.” Id. (citing PersonalWeb
Techs., LLC v. Apple, Inc., 848 F.3d 987, 991 (Fed. Cir.
2017)). Anticipation is “a question of fact reviewed for sub-
stantial evidence.” ABS Glob., Inc. v. Cytonome/St, LLC,
84 F.4th 1034, 1043 (Fed. Cir. 2023). What a piece of prior
art teaches is also a question of fact. Apple, 28 F.4th at
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D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION 5
259. Substantial evidence “is such relevant evidence as a
reasonable mind might accept as adequate to support a
conclusion.” Novartis AG v. Torrent Pharms. Ltd., 853 F.3d
1316, 1323–24 (Fed. Cir. 2017) (cleaned up).
We turn first to the Board’s construction of the term
“subtracted” and subsequently consider the Board’s find-
ings that Murphy anticipates or renders obvious claims
1–21.
I
D3D argues that the Board’s construction of the term
“subtracted” to mean “withdrawn or taken away, as a part
from a whole,” was unduly broad. According to D3D, sub-
traction requires actual “elimination of data from the un-
derlying model from which left eye and right eye images
are created,” rather than merely removing data from the
displayed image. Appellant’s Br. 30. We disagree.
Claim 1 recites “selecting items of said image to be sub-
tracted from said image to produce a filtered image.” ’771
patent claim 1 (emphasis added). As is evident from the
plain language of the claim, the recited subtraction occurs
relative to the image. In other words, items are subtracted
from the three-dimensional image displayed in the HDU;
nothing in the claim language suggests that subtraction re-
quires data to be eliminated from the underlying data
model.
The specification further indicates that D3D’s argu-
ments regarding elimination of data are misplaced. The
’771 patent’s references to “filtering” an image suggest that
subtraction is essentially filtering:
Method 500 begins with processing block 502
which recites selecting items of the image to be sub-
tracted from the image to produce a filtered image.
The user selects the tissues to be filtered. Several
filtering processes are possible, including by
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6 D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
composition (e.g. Houndsfeld unit or signal inten-
sity) or position (x, y, z) of the tissue.
Id. at col. 9 ll. 60–67. The specification discloses other in-
stances in which filtering does not involve deletion of any
data. See, e.g., id. at col. 13 ll. 15–18 (explaining as an ex-
ample of filtering that “one method would be to ignore all
voxels with H. units less than 500” (emphasis added)). The
specification also explains that the user selects tissues—as
opposed to data—to remove from the image to create a fil-
tered image. Id. at col. 9 ll. 60–67; see also Final Written
Decision, 2022 WL 3137967, at *5 (reasoning that “[i]t
takes a logical leap to suggest that eliminating displayed
tissue means eliminating the data underlying the dis-
played tissue”).
Finally, even assuming that intrinsic evidence does not
suffice to resolve this claim construction dispute, extrinsic
evidence additionally supports the Board’s construction.
Microsoft’s expert, Dr. Zyda, explained that D3D’s con-
struction “would be inconsistent with a [skilled artisan’s]
desire to quickly and efficiently manipulate 3D images in
real time by, for instance, repeatedly removing and re-add-
ing different tissue sections.” Final Written Decision, 2022
WL 3137967, at *6 (citing J.A. 1394 ¶ 8). The Board rea-
sonably credited Dr. Zyda’s testimony over the testimony
of D3D’s expert, Dr. Bajaj, which failed to explain the lack
of “any discussion [in the ’771 patent] of deleting underly-
ing data and reloading such data from an archive” in the
manner advanced by D3D. Id. (emphasis in original).
For the foregoing reasons, we agree with the Board
that the term “subtracted” need not be construed to mean
that data is eliminated from the underlying data model.
II
Turning next to the Board’s consideration of the prior
art, substantial evidence supports the Board’s determina-
tion that Murphy anticipates or renders obvious claim 1.
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D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION 7
Id. at *7. The parties dispute only whether Murphy meets
the subtracted limitation of claim 1.
The Board determined that “Murphy’s hiding, cutting
away, and making items completely transparent teaches
withdrawing or taking away items from an image.” Id. at
*8. The Board considered Murphy’s teachings, including
Murphy’s ability to hide and show each anatomical feature,
and credited Dr. Zyda’s testimony that this ability “corre-
sponds to subtracting the selected items from the image to
produce a filtered image,” as claimed in the ’771 patent. Id.
On appeal, D3D urges that the Board’s decision rests
on a flawed claim construction and “[b]ecause mere re-
moval [of] an item from a displayed image is not eliminat-
ing the item from the underlying volume of interest . . .
there was no substantial evidence for the Board to conclude
that Murphy anticipated independent claims 1, 8, and 15.”
Appellant’s Br. 62. We disagree. For the reasons discussed
above, we agree with Microsoft that the Board correctly
construed the term subtracted. Under that construction,
substantial evidence supports the Board’s finding that
Murphy teaches the subtracted limitation. We therefore
affirm the Board’s determination that Murphy anticipates
or renders obvious the challenged independent claims.
III
Finally, D3D argues that dependent claims 6, 13, and
20 are independently patentable over Murphy. Claim 6,
which is similar to claims 13 and 20, recites “sorting voxels
of said items by a property of said voxel; [and] applying col-
ors to groups of sorted voxels to obtain a colored image.”
’771 patent claim 6.
D3D argues, as it did before the Board, that Murphy
does not teach or suggest sorting voxels or applying colors
to groups of sorted voxels by a property of the voxel because
“Murphy is clear that color assignment is based on anatom-
ical features,” rather than specific properties. Appellant’s
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8 D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
Br. 72. In other words, D3D argues that because Murphy
might, for example, apply the color orange to spleen voxels,
and blue to liver voxels, Murphy does not apply color ac-
cording to some specific property, but instead based solely
on anatomical features. Id.
We agree with Microsoft that substantial evidence sup-
ports the Board’s rejection of D3D’s arguments. As the
Board reasoned, D3D reads too much into the word “prop-
erty.” Final Written Decision, 2022 WL 3137967, at *9.
Murphy discloses creating new segment volumes in which
“all voxels that are inside the desired segment fall on one
side of the threshold value, and all voxels that are outside
the desired segment fall on the other side of the threshold
value.” Id. (quoting J.A. 1157–58 ¶ 42). The Board there-
fore found that Murphy teaches comparing the values of
voxels to a threshold and sorting voxels according to their
properties. Id. Further, the Board determined that Mur-
phy renders color for each voxel, including those voxels in
segment volumes. Id. at *10. This led the Board to deter-
mine that Murphy discloses “applying colors to groups of
sorted voxels to obtain a colored image.” Id. (citing J.A.
1158–59 ¶ 45). Because substantial evidence supports the
Board’s determination that Murphy anticipates or renders
obvious claims 6, 13, and 20, we affirm.
CONCLUSION
We have considered D3D’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we af-
firm.
AFFIRMED