PTAB

IPR2018-00197

Align Technology Inc v. 3Shape AS

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Scanning System and a Handheld Device
  • Brief Description: The ’675 patent describes a scanning system featuring a handheld device capable of performing two main functions: capturing the 3D geometry of an environment (e.g., an intra-oral scan) and remotely controlling the visual representation of that 3D environment on a display. The system purports to allow an operator to switch between scanning and view manipulation without needing a separate input device like a mouse or trackball.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-2, 9-11, and 18 under §102

  • Prior Art Relied Upon: Kriveshko (Application # 2007/0171220).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kriveshko discloses every element of the challenged claims. Kriveshko teaches a scanning system with a handheld, freely positionable probe (a handheld optical scanner) for capturing 3D images of teeth. The system includes a remote display that shows a 3D model of the scanned environment. Crucially, Kriveshko’s handheld device includes a user input element (e.g., a button or thumb wheel) used to select and manipulate on-screen user controls, which in turn adjust the view of the 3D model by rotating, scaling, and panning. Petitioner contended this directly teaches the core limitation of a user interface on the handheld device for remotely controlling the display. Kriveshko was also argued to teach the dependent claim limitations, including recording 3D geometry, its use as an intra-oral scanner, adjusting viewing angle and magnification, and providing audible feedback to the operator.

Ground 2: Obviousness of Claims 1-5, 8-11, and 14-19 under §103

  • Prior Art Relied Upon: Kriveshko (Application # 2007/0171220) and Serra (Application # 2006/0020204).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that even if Kriveshko alone does not render the claims invalid, the combination with Serra does. Kriveshko provided the basic system of a handheld scanner with on-device inputs. Serra was argued to explicitly teach enhancing such a system by incorporating a 3D sensor (i.e., a motion sensor) into the handheld scanning probe to control the view of the 3D data. Serra discloses that movement of the probe itself can be used to rotate the scene, and buttons on the probe can be used to switch between a scanning mode and an interactive visualization mode. This combination, Petitioner argued, teaches all limitations of the independent claims and the additional features of claims 3-5, 8, and 14-19, such as including a motion sensor, using that sensor to determine the view, and having a means to switch between scanning and view control.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Kriveshko and Serra to achieve improved ergonomics and functionality. Serra explicitly taught that incorporating a 3D user interface into the scanning device itself provides ergonomic advantages by allowing a user to perform both scanning and examination processes with the same device, eliminating the inconvenience of putting down the scanner to use a separate input device.
    • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination involved applying a known user interface technique (Serra's motion-based control) to a similar, known type of system (Kriveshko's intra-oral scanner) to yield the predictable result of a more ergonomic and efficient device.

Ground 3: Obviousness of Claims 6, 7, 12, and 13 under §103

  • Prior Art Relied Upon: Kriveshko (Application # 2007/0171220), Serra (Application # 2006/0020204), and Brennan (Patent 8,903,476).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Kriveshko and Serra combination by adding disclosures from Brennan to render claims 6, 7, 12, and 13 obvious. Brennan teaches using gestures, detected by a motion sensor in a handheld device, to control the device's functions (mapping to claims 6 and 7). Brennan also discloses combining a scanning probe with other tools, such as surgical or mechanical probes (e.g., for cutting or manipulating tissue), into a single handheld device (mapping to claims 12 and 13).
    • Motivation to Combine: A POSITA would be motivated to incorporate Brennan’s teachings for predictable benefits. First, using gesture-based controls was a known alternative to buttons or other inputs for controlling a device, representing a simple substitution of one known element for another. Second, Brennan explicitly teaches combining scanning functionality with surgical or mechanical tools to reduce instrument swapping and improve efficiency during medical procedures. Given that Kriveshko's scanner is intended for dental applications, which often involve surgical or mechanical work, a POSITA would have found it obvious to combine these functions into one tool to reduce distraction and improve workflow.
    • Expectation of Success: Success would be expected, as it involved the simple substitution of known UI techniques and the combination of known medical tools to achieve the predictable advantages of improved usability and procedural efficiency.

4. Key Claim Construction Positions

  • Petitioner argued that claim terms should be given their broadest reasonable interpretation. For several terms, the petition adopted the explicit definitions provided within the ’675 patent’s specification (e.g., "3D geometry," "handheld device," "motion sensor").
  • For the means-plus-function term in claim 3, "means for manually switching between performing the at least one scanning action and remotely controlling the view," Petitioner identified the corresponding structure in the specification as an "actuator." This actuator could be "a button, switch or contact," a "touch sensitive surface or element," or a "motion sensor...that function[s] as the actuator when it registers a specific type of movement." This construction was central to the obviousness argument, as Serra's button and motion sensor were argued to meet this limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner noted that this petition was filed concurrently with another IPR proceeding against the same patent (IPR2018-00198). Petitioner argued that both petitions should be instituted because the grounds were not cumulative. It was asserted that the references in each petition were used to teach different claim features in different ways, with each petition relying on prior art that provided stronger disclosures for different respective claim elements.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-19 of the ’675 patent as unpatentable.