Align Technology Inc v. 3Shape AS

1. Case Identification

• Case #: IPR2018-00195
• Patent #: 9,629,551
• Filed: November 21, 2017
• Petitioner(s): Align Technology, Inc.
• Patent Owner(s): 3Shape A/S
• Challenged Claims: 1-25

2. Patent Overview

• Title: Method for Detecting a Movable Object in 3D Scanning
• Brief Description: The ’551 patent discloses a method for improving the quality of virtual 3D models generated by intraoral scanners. The method detects and disregards data from movable objects (e.g., a patient's tongue, cheek, or a dentist's finger) that obstruct the view of the rigid object being scanned (e.g., teeth) by defining an "excluded volume" and ignoring any surface data captured within that volume.

3. Grounds for Unpatentability

Ground 1: Anticipation over McQueston - Claims 1-8 and 11-25 are anticipated by McQueston under 35 U.S.C. §102.

• Prior Art Relied Upon: McQueston (Application # 2013/0335417).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that McQueston discloses every limitation of the challenged claims. McQueston describes a system for 3D intraoral scanning that addresses the known problem of "transient obstructions" like a patient's tongue or a technician's finger. It teaches creating a 3D model by acquiring multiple 3D representations (scans). Critically, McQueston discloses identifying a "prohibited volume" within the scan space by using a spatial matrix to track unoccupied voxels. Data points identified as "outliers" within this prohibited volume are then excluded from the final 3D model reconstruction. Petitioner contended this "prohibited volume" directly corresponds to the ’551 patent's "excluded volume," and McQueston’s process of excluding outliers is identical to the ’551 patent's "disregarding" step. The petition provides a detailed, element-by-element mapping of McQueston's disclosure to independent claims 1, 23, and 25, as well as all dependent claims.

Ground 2: Obviousness over McQueston and Hart - Claims 9 and 10 are obvious over McQueston in view of Hart under 35 U.S.C. §103.

• Prior Art Relied Upon: McQueston (Application # 2013/0335417) and Hart (Application # 2004/0155975).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically addressed dependent claims 9 and 10, which add the limitation that the "scan volume is defined by the focusing optics in the 3D scanner." Petitioner asserted that while McQueston teaches the core method of the independent claims, it does not explicitly detail the use of "focusing optics." To supply this element, Petitioner relied on Hart, which discloses a 3D imaging system that uses a "focusing or relay lens group" to determine depth information and define the scan volume based on the properties of light rays. The combination of McQueston's scanning and data exclusion method with Hart's focusing optics technology was argued to render claims 9 and 10 obvious.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would be motivated to combine the references because McQueston itself expressly points to Hart as an example of a suitable camera system for capturing images. A POSITA seeking to implement or improve upon McQueston's system would have naturally looked to Hart's teachings on focusing optics to enhance the system's depth calculation and create a more robust 3D imaging system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references, as it involved applying a known technique (Hart's focusing optics) to a known system (McQueston's scanner) to achieve the predictable result of improved depth perception and scan volume definition.

• Additional Grounds: Petitioner asserted an alternative obviousness challenge against claims 1-8 and 11-25 based on McQueston alone, arguing that to the extent any minor differences were found to exist, they would have been obvious modifications to a POSITA.

4. Key Claim Construction Positions

• "movable object": Petitioner proposed this term be construed as "an object that occurs in a scanning volume between a scanner and a scan target and that is separate from the scan target object." This construction is broad enough to encompass the "transient obstructions" described in McQueston, such as a tongue, cheek, or instrument, facilitating the mapping of the prior art to the claims.
• "excluded volume": Petitioner proposed this term be construed as "a scan volume, or a sub-volume of the scan volume, where no surface of the scan object is present." This construction was argued to be consistent with the specification and was critical for equating the ’551 patent's "excluded volume" with McQueston's concept of a "prohibited volume" determined by tracking unoccupied voxels in a spatial matrix.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention was that the ’551 patent is not entitled to the filing date of its provisional application. Petitioner argued that the key claim limitation "where no surface can be present in both the first 3D representation and the second 3D representation" was added during prosecution and lacks written description support in the provisional. Therefore, the effective priority date of the independent claims is the later PCT filing date, which makes McQueston (claiming priority to an earlier provisional) valid §102(e) prior art.
• Equivalence of "Excluded" and "Prohibited" Volumes: Beyond simple construction, Petitioner's core technical argument rested on the equivalence of the ’551 patent's "excluded volume" and McQueston's "prohibited volume." The petition argued that McQueston’s method of creating a spatial matrix and flagging voxels as unoccupied or "prohibited" based on cumulative scan data is the same underlying technical process for determining the "excluded volume" described in the ’551 patent.

6. Arguments Regarding Discretionary Denial

• Petitioner noted that this petition was filed concurrently with a second IPR petition (IPR2018-00196) against the same patent. It argued that both petitions should be instituted because they rely on different primary prior art references (McQueston in this petition, Bernardini in the other) that "disclose the claims in different ways, with different strengths." This was presented to preemptively counter any argument for discretionary denial based on redundant or serially-filed petitions.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-25 of Patent 9,629,551 as unpatentable.