Case: 23-1462 Document: 36 Page: 1 Filed: 04/03/2024
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
D3D TECHNOLOGIES, INC.,
Appellant
v.
MICROSOFT CORPORATION,
Appellee
______________________
2023-1462
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00878.
______________________
Decided: April 3, 2024
______________________
TAREK N. FAHMI, Ascenda Law Group, PC, San Jose,
CA, argued for appellant.
SARAH JACK, Fish & Richardson P.C., Minneapolis,
MN, argued for appellee. Also represented by, NITIKA
GUPTA FIORELLA, Wilmington, DE; AAMIR ABDULQADER
KAZI, Atlanta, GA; BETTY H. CHEN, Desmarais LLP, San
Francisco, CA.
______________________
Case: 23-1462 Document: 36 Page: 2 Filed: 04/03/2024
2 D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
Before PROST, SCHALL, and REYNA, Circuit Judges.
SCHALL, Circuit Judge.
D3D Technologies, Inc. (“D3D”) owns U.S. Patent No.
9,980,691 (“the ’691 patent”), which is at issue in D3D
Technologies, Inc. v. Microsoft Corp., 6:20-cv-01699 (M.D.
Fla). In this appeal, D3D challenges the Final Written De-
cision (“FWD”) of the Patent Trial and Appeal Board
(“Board”) in an inter partes review proceeding initiated by
petitioner Microsoft Corporation (“Microsoft”). In the
FWD, the Board found claims 1–9 and 11–21 of the ’691
patent rendered obvious by the prior art combination of
U.S. Patent Publication No. 2006/0279569 (“Acosta”) and
U.S. Patent Publication No. 2004/0059214 (“Tomoda”). Mi-
crosoft Corp. v. D3D Techs., Inc., IPR2021-00878, 2022 WL
17254077 (P.T.A.B. Nov. 28, 2022) (“Final Written Deci-
sion”). For the reasons stated below, we affirm.
BACKGROUND
I
The ’691 patent relates to methods for providing three-
dimensional (or “3D”) viewing of images. The patent de-
scribes combining image “slices” (i.e., two-dimensional (or
“2D”) images) generated by medical imaging devices such
as CT (Computed Tomography), MRI (Magnetic Resonance
Imaging), and PET (Positron Emission Tomography) to cre-
ate a “volume of interest.” ’691 patent col. 2 ll. 43–46, col.
5 ll. 8–10, 21–43. The volume of interest is presented in a
three-dimensional representation to a display unit worn on
a user’s head. Id. col. 2 ll. 46–48, col. 5 ll. 10–13, 36–60.
The ’691 patent also describes the generation and dis-
play of a movable three-dimensional cursor within the
three-dimensional image space. Id. col. 17 ll. 14–20, 36–
41. In a medical setting, for example, this allows a user to
subtract from view tissue falling outside the cursor or to
rotate the cursor to permit examination of the volume of
interest from different angles. Id. col. 17 ll. 36–57.
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D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION 3
II
As noted, the Board found claims 1–9 and 11–21 of the
’691 patent obvious in view of Acosta and Tomoda. Acosta
describes a system and method for analyzing and imaging
three-dimensional volume data sets using a “3D sampling
probe” that “corresponds to a sub-volume of a larger 3D vol-
ume.” J.A. 1505 Abstract, J.A. 1506 figs. 1–2, J.A. 1526
¶ 59, J.A. 1528 ¶ 83. Acosta primarily discusses use of its
system and method for manipulating seismic data, but also
explains that they can be used “for analyzing and imaging
in the medical field, where the datavalue element of the
voxel is obtained from a CAT (computerized axial tomogra-
phy) scanner or a magnetic resonance imaging (MRI) pro-
cedure.” J.A. 1526 ¶ 54; see also id. ¶¶ 51–53. 1
Tomoda describes an apparatus and method for pro-
cessing a plurality of images using a three-dimensional re-
gion of interest (“ROI”) specifying unit. J.A. 1417 Title,
¶¶ 10–13, J.A. 1421 ¶ 72, J.A. 1412–14 figs. 9–11. In one
embodiment of Tomoda’s process, three-dimensional image
data is obtained, two-dimensional images are produced
from the three-dimensional image data, and then a spher-
ical three-dimensional ROI is placed and located in the
two-dimensional images. J.A. 1421 ¶¶ 71–72. At that
point, one or more sections of the original three-dimen-
sional image that cross the specified ROI are searched, and
their sectional images are displayed. J.A. 1420 ¶ 55, J.A.
1421 ¶¶ 72–73, J.A. 1414–15 figs. 11–12.
III
The parties assert, and we agree, that for purposes of
this appeal independent claim 1 of the ’691 patent is repre-
sentative. Claim 1 pertains to displaying a three-
1 A “voxel” is a volume element within a 3D volume
data set. See J.A. 1523 ¶ 6, J.A. 1526 ¶ 51; ’691 patent col.
13 ll. 55–65.
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4 D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
dimensional cursor in the volume of interest and then se-
lecting portions of the two-dimensional image slices corre-
sponding to the cursor’s volume for further processing. It
provides as follows:
1. A method comprising:
[a] generating a three-dimensional image space or
volume from a plurality of two-dimensional radio-
logical image slices;
[b] generating a three-dimensional cursor that has
a non-zero volume;
[c] displaying the three-dimensional cursor in the
three-dimensional medical image space or volume;
[d] responsive to a first input, moving said three-
dimensional cursor within the three-dimensional
medical image space or volume; and
[e] responsive to a second input, selecting portions
of the two-dimensional radiological image slices
corresponding to the volume of the three-dimen-
sional cursor for further processing.
’691 patent col. 22 ll. 49–63.
The Board found elements [a]–[d] of claim 1 to be
taught by Acosta. Final Written Decision, 2022 WL
17254077, at *17–19. On appeal D3D does not challenge
those findings. That leaves only element [e] of claim 1 at
issue.
As seen, in relevant part element 1[e] recites “selecting
portions of the two-dimensional radiological image slices
corresponding to the volume of the three-dimensional cur-
sor for further processing.” Microsoft’s petition asserted
that the combination of Acosta and Tomoda, which it refer-
enced as “ATC,” J.A. 185, taught this limitation, J.A. 198–
99. Specifically, the petition stated that “ATC renders [1e]
obvious . . . because Acosta’s 3D sampling probe would
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D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION 5
have been used to select the ROI in response to an input,
and Tomoda’s method would have been used to select por-
tions of the original 2D radiological slices corresponding to
the volume of [Acosta’s] 3D cursor for further processing,
e.g., displaying.” J.A. 194; see also J.A. 57, 185. In its Pa-
tent Owner Response, D3D contended that, in the petition,
Microsoft “effectively admits that Acosta fails to teach se-
lection of portions of two-dimensional radiological image
slices corresponding to the volume of the three-dimensional
cursor for further processing.” J.A. 517. Instead, D3D ar-
gued, Microsoft relied solely on Tomoda as teaching that
part of claim element 1[e]. Id. D3D further argued that
Tomoda describes the selection of entire two-dimensional
image slices that correspond to the ROI, not the selection
of portions of the image slices corresponding to the volume
of the three-dimensional cursor, as required by element
1[e]. J.A. 517–29.
In the FWD, the Board construed as follows the lan-
guage in element 1[e] that recites “selecting portions of the
two-dimensional radiological image slices corresponding to
the volume of the three-dimensional cursor for further pro-
cessing”:
(1) the term “corresponding” means “to match or
have a close similarity;” and (2) the phrase “select-
ing portions” is limited in two respects, specifically,
first that the selected portions are “of the two-di-
mensional radiological image slices” and second
that the selected portions must be corresponding to
the volume of the three-dimensional cursor; and
(3) the phrase “for further processing” is an in-
tended use that has no patentable weight.
Final Written Decision, 2022 WL 17254077, at *8.
The Board then set forth Microsoft’s argument that the
combination of Acosta and Tomoda teaches element 1[e],
id. at *19–20, 21–22, and D3D’s arguments to the contrary,
id. at *20–21, 22.
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6 D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
Proceeding to its analysis, the Board concluded that
Microsoft’s arguments and the testimony of its expert Dr.
Fuchs relating to Acosta’s teachings of “selecting,” as well
as Tomoda’s teachings relating to the specified ROI,
showed that “the combination of Acosta and Tomoda
teaches ‘selecting portions of the two-dimensional radiolog-
ical image slices corresponding to the volume of the three-
dimensional cursor’ using the correct construction of ‘cor-
responding.’” Id. at *22. Having stated that the combina-
tion of Acosta and Tomoda taught limitation 1[e], the
Board next explained its reasoning. See id. at *22–27. In
its explanation the Board made clear that it found that
Acosta teaches the “selecting of portions of two-dimen-
sional radiological slices corresponding to the volume of the
three-dimensional cursor,” while Tomoda teaches the re-
quired “for further processing,” to the extent the latter
phrase is given patentable weight. See id. at *22–25 (rely-
ing on Acosta’s teaching of a 3D sampling probe that can
be placed at a ROI within the 3D volume data set as per-
forming the claimed “selecting”), id. at *29 (noting that, to
the extent the “for further processing” phrase is given pa-
tentable weight, Tomoda’s “displaying” teaches this claim
element). On this basis, the Board found claims 1–9 and
11–21 of the ’691 patent unpatentable as obvious in view of
Acosta and Tomoda.
DISCUSSION
I
We review the Board’s legal determinations de novo
and its underlying factual determinations for substantial
evidence. Koninklijke Philips N.V. v. Google LLC, 948 F.3d
1330, 1335 (Fed. Cir. 2020). We review the Board’s process
for compliance with the Administrative Procedure Act
(“APA”) de novo, and we must set aside Board decisions if
they are “arbitrary, capricious, an abuse of discretion, . . .
otherwise not in accordance with law,” “in excess of statu-
tory jurisdiction, authority, or limitations,” or “without
Case: 23-1462 Document: 36 Page: 7 Filed: 04/03/2024
D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION 7
observance of procedure required by law.” 5 U.S.C. § 706;
Sirona Dental Sys. GmbH v. Institut Straumann AG, 892
F.3d 1349, 1352 (Fed. Cir. 2018).
II
On appeal, D3D argues that the Board violated the
APA when it held claim 1 of the ’691 patent obvious in view
of Acosta and Tomoda. In making this argument, D3D fo-
cuses on the Board’s finding that Acosta alone teaches the
“selecting” required by element 1[e]. According to D3D,
this finding was based on a theory not set forth in Mi-
crosoft’s petition, which should have guided the litigation,
in line with SAS Institute Inc. v. Iancu, 138 S. Ct. 1348,
1355 (2018). Specifically, D3D asserts that, as presented
in the petition, Microsoft’s argument was that the combi-
nation of Acosta and Tomoda, not Acosta alone, teaches
claim element 1[e]. In that regard, D3D points, Appellant’s
Br. 39, to the following statement in the petition: “ATC ren-
ders [1e] obvious . . . because Acosta’s 3D sampling probe
would have been used to select the ROI in response to an
input, and Tomoda’s method would have been used to se-
lect portions of the original 2D radiological slices corre-
sponding to the volume of [Acosta’s] 3D cursor for further
processing, e.g., displaying.” J.A. 194; see J.A. 57, 185.
In response, Microsoft contends that the Board had dis-
cretion to interpret the petition and properly read it to de-
lineate arguments that both Acosta and Tomoda disclose
the claimed methods. Appellee’s Br. 23 (citing J.A. 183
(“Acosta and Tomoda disclose methods for viewing a 3D im-
age and selecting regions/volume of interest (ROIs) in the
3D image using a 3D cursor (e.g., Acosta’s 3D sampling
probe, Tomoda’s 3D ROI.”)). As for Acosta’s teachings
alone, Microsoft states that “[t]he same portions of the pe-
tition that establish how Acosta’s probe ‘selects’ also estab-
lish that such selecting results in a selection
‘corresponding’ to the probe, as the Board construed the
term.” Id. at 22.
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8 D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
III
IPR proceedings are formal administrative adjudica-
tions subject to the procedural requirements of the APA.
Arthrex, Inc. v. Smith & Nephew, Inc., 935 F.3d 1319, 1326
(Fed. Cir. 2019) (citations omitted). As seen, D3D argues
that the Board’s reliance on Acosta alone with respect to
the “selecting” part of claim element 1[e] amounted to an
APA violation. We have stated that an APA violation oc-
curs when the Board “depart[s] markedly from the evi-
dence and theories presented by the petition or institution
decision, creating unfair surprise.” Arthrex, 935 F.3d at
1328. 2 We affirm the Board’s decision because we conclude
that such a violation did not occur here.
2 Microsoft argues that we should review the Board’s
interpretation of the petition for abuse of discretion. The
cases Microsoft points to, however, dealt with the situation
where we were reviewing the Board’s compliance with its
own procedures, e.g., where the Board was reviewing a pe-
tition in the context of 37 C.F.R. § 42.23(b), which permits
the Board to strike arguments not responsive to ones pre-
sented in the patent owner’s response or the institution de-
cision, or in the context of 37 C.F.R. §§ 42.22(a)(2) and
42.104, pertaining to what a petitioner must provide in the
petition. See Appellee’s Br. 20; Ericsson Inc. v. Intell. Ven-
tures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018) (consid-
ering whether the Board abused its discretion in the
context of § 42.23(b)); MModal LLC v. Nuance Commc’ns,
Inc., 846 F. App’x 900, 906–07 (Fed. Cir. 2021) (reviewing
for abuse of discretion the Board’s decision finding a peti-
tion to be inadequate under §§ 42.22 and 42.104); see also
Corephotonics, Ltd. v. Apple, Inc., 84 F.4th 990, 1008 (Fed.
Cir. 2023) (explaining that we review de novo whether a
reply brief presents a new theory of unpatentability, but
that we review for abuse of discretion whether a reply brief
properly responds to arguments pursuant to § 42.23(b)).
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D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION 9
We begin with a close examination of Microsoft’s peti-
tion. The petition’s analysis for element 1[e] first incorpo-
rates its analysis for the other elements of claim 1. J.A.
194 (“For the reasons noted above in Section III.A.3, ATC
renders [1]e obvious . . .). The petition then explains that
Acosta teaches a “3D sampling probe [that] can be placed
at a ROI within a 3D volume dataset.” Id. (citing J.A. 188–
90 pertaining to claim element 1[b]). As previously stated
in the petition, Acosta’s larger three-dimensional volume
set is generated from two-dimensional image slices. J.A.
175, 186–87 (corresponding to claim element 1[a]). The pe-
tition also explains using user input (the “second input” of
claim element 1[e]) regarding “a second location to move
the 3D sampling probe to a ROI for which the user would
like to view 2D image slices.” J.A. 194. The petition then
goes on to state that a Volume Sampling Module in Acosta
“extracts data from the data volume to draw an image of
the intersection of the 3D sampling probe with the 3D vol-
ume.” Id. (citing J.A. 1530 ¶¶ 102–04). In our view, this
teaching of extracting data from the data volume formed of
2D slices, and drawing an image of the intersection of the
3D sampling probe with the 3D volume, corresponds to
claim element 1[e]’s “selecting portions of the two-dimen-
sional radiological image slices corresponding to the vol-
ume of the three-dimensional cursor for further
processing.”
While it is true that the petition refers to Tomoda as
teaching “selecting portions,” J.A. 194–98, we cannot say
that it was a marked departure from the petition for the
FWD to have relied on Acosta as teaching selecting por-
tions. We say this for two reasons. First, as just described,
the petition ties Acosta to “selecting portions of . . . two di-
mensional radiological image slices.” And second, while
the petition relies on both Acosta and Tomoda generally for
element 1[e], it discussed Tomoda specifically in connection
with the display of the selected slices, i.e., “for further pro-
cessing.” J.A. 195. Moreover, the petition has a detailed
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10 D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION
discussion of Acosta. That discussion provides a teaching
of the claimed element, and the FWD relied upon the same
paragraphs of Acosta as the petition in concluding that
Acosta teaches “selecting that corresponds ‘to the volume
of the three-dimensional cursor.’” Final Written Decision,
2022 WL 17254077, at *23 (quoting J.A. 1530 ¶¶102, 104).
For us to discern an APA violation, we must find more
of a departure from the petition than we have here. See
Arthrex, 935 F.3d at 1328 (finding no violation of the APA
when “the Board properly relied on the same references,
the same disclosures, and the same obviousness theories
advanced by the petition and debated by the parties”). For
example, we have concluded that there was a “marked de-
parture” from the petition where the Board’s final claim
construction changed significantly from the institution de-
cision, where the Board mixed arguments from two differ-
ent grounds of obviousness to create its own theory of
unpatentability, and where the Board relied on different
portions of the prior art than those provided in the petition.
Id. (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1372–73, 1377 (Fed. Cir. 2016); SAS Inst. v. Comple-
mentSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016), rev’d
on other grounds sub nom. SAS Inst. Inc., 138 S. Ct. 1348;
In re NuVasive, Inc., 841 F.3d 966, 971 (Fed. Cir. 2016)).
We also have found the Board to have violated the APA
when the patent owner did not receive adequate notice or
opportunity to respond to an argument. Compare M&K
Holdings, Inc. v. Samsung Elecs., 985 F.3d 1376, 1385 (Fed.
Cir. 2021) (finding the Board had violated the APA because
a patent owner was not put on notice that a reference would
be used to anticipate a claim when the petition challenged
the claim only for obviousness) and EmeraChem Holdings
v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1352 (Fed.
Cir. 2017) (finding an APA violation when a reference re-
lied upon in the final written decision was not a part of the
grounds for rejection of those claims in the petition or the
institution decision) with Sirona Dental Sys. GmbH, 892
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D3D TECHNOLOGIES, INC. v. MICROSOFT CORPORATION 11
F.3d at 1356 (“Because the petition provided Sirona notice
and opportunity to address the portions of [the prior art]
relied on by the Board, the Board’s reliance on these por-
tions of [the prior art] did not violate the APA and is not
inconsistent with SAS.”). Although Microsoft’s petition
spoke generally of a combination of Acosta and Tomoda, as
seen, it did describe what Microsoft asserted was Acosta’s
teaching of the “selecting” component of claim element 1[e].
We thus cannot say D3D was not on notice of Microsoft’s
argument, and it certainly had ample opportunity to re-
spond to the argument.
CONCLUSION
For the foregoing reasons, the FWD is affirmed. 3
AFFIRMED
COSTS
No costs.
3 We accordingly do not reach Microsoft’s alternative
argument regarding the construction of “corresponding” as
part of the Board’s construction of “selecting portions.”