Align Technology Inc v. 3Shape AS

1. Case Identification

• Case #: IPR2019-00117
• Patent #: 9,962,244
• Filed: November 5, 2018
• Petitioner(s): Align Technology, Inc.
• Patent Owner(s): 3Shape As
• Challenged Claims: 1-5, 8-10, 12, 15-16, 18, 21-22, 24, 26, 28, and 29

2. Patent Overview

• Title: Focus Scanner for Recording Surface Geometry and Surface Color
• Brief Description: The ’244 patent describes a focus scanning system, such as an intraoral dental scanner, that records both the 3D surface geometry and surface color of an object. The system operates by capturing a series of 2D images at different focus plane positions to form a "stack," which is then processed to derive the combined 3D geometry and color information.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fisker and Szeliski/Matsumoto - Claims 1-5, 8-10, 15-16, 18, 21-22, 24, 26, and 28 are obvious over Fisker in view of Szeliski or Matsumoto.

• Prior Art Relied Upon: Fisker (Application # 2012/0092461), Szeliski (Patent 6,097,854), and Matsumoto (Patent 7,106,348).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fisker taught all elements of the independent claims except for the specific method of determining object color by "computing a weighted average of sub-scan color values" from overlapping sub-scans (limitation [1.6]). Fisker disclosed a focus scanner that captures a stack of 2D images to determine geometry and color. Petitioner asserted that both Szeliski and Matsumoto explicitly taught methods for blending color data from multiple overlapping images using a weighted average calculation to create a seamless, high-quality 3D texture map. Szeliski’s method uses a weighted sum to blend colors from corresponding pixels in overlapping images to form a composite image. Similarly, Matsumoto disclosed a weighted mean process to improve texture information and create a more accurate 3D model from images shot from different viewpoints.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Fisker with Szeliski or Matsumoto to improve the image quality of the final 3D model. Fisker's system captures multiple images that must be combined, and Szeliski and Matsumoto provided well-known, advantageous techniques for blending color and texture from such multiple-image data sets to produce a more accurate and clear final image, which was a predictable improvement.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success, as combining these software-based image processing techniques (weighted averaging) with Fisker’s hardware would be a routine implementation using standard engineering practices without requiring new hardware.

Ground 2: Obviousness over Fisker and Yamada/Suzuki - Claim 29 is obvious over Fisker in view of Yamada or Suzuki.

• Prior Art Relied Upon: Fisker (Application # 2012/0092461), Yamada (Application # 2007/0035641), and Suzuki (Application # 2013/0070128).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fisker taught the base scanner system of claim 29 but did not disclose the specific limitation of detecting saturated pixels and mitigating the resulting color error (limitation [29.5]). Fisker acknowledged that shiny surfaces create difficult scanning conditions but only offered a passive mitigation method (polarizing filter), not an active detection and correction process. Petitioner contended that both Yamada and Suzuki addressed this exact problem. Yamada disclosed a "white-saturation detection unit" to find saturated pixels and a "pixel-value correcting step" that uses interpolation from neighboring pixels to correct the error. Suzuki disclosed a digital camera that detects defective pixels (including saturated "white defects") and a correction unit that corrects the pixel value based on a weighted average of peripheral pixels.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to incorporate the teachings of Yamada or Suzuki into Fisker's system to solve the known problem of pixel saturation when scanning shiny surfaces. Since producing high-quality images is a primary goal, and saturation degrades quality, using a known technique to detect and correct for it would be an obvious improvement to Fisker's system.
  • Expectation of Success (for §103 grounds): The combination would have been a predictable and routine software modification, as Yamada and Suzuki's methods could be implemented in Fisker's data processor without additional hardware.

Ground 3: Obviousness over Thiel, Szeliski, and Matsumoto - Claims 1, 22, and 24 are obvious over Thiel425 and Thiel576, in view of Szeliski or Matsumoto.

• Prior Art Relied Upon: Thiel425 (Application # 2010/0067789), Thiel576 (Application # 2011/0080576), Szeliski (’854 patent), and Matsumoto (’348 patent).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that the combination of Thiel425 and Thiel576 taught a handheld chromatic confocal scanner that determines both geometry and color from a stack of 2D images, but not the "weighted average" limitation. Thiel425 taught a scanner for 3D geometry using chromatic depth measurement, while Thiel576 taught enhancing such a device to determine surface color. The combination of these two references, which share an inventor and assignee, allegedly disclosed all elements of the independent claims except the weighted averaging of color values. As in Ground 1, Petitioner argued that Szeliski and Matsumoto supplied this missing element.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to combine the Thiel references because they share an inventor, assignee, and filing proximity, and are both directed to improving 3D dental imaging. A POSITA would then combine this system with Szeliski or Matsumoto's teachings for the same reason as in Ground 1: to apply a known, superior method for blending color data from multiple sub-scans to achieve a more accurate and seamless 3D model.
  • Expectation of Success (for §103 grounds): Success would be reasonably expected because the combination involved applying established software algorithms to the data generated by the Thiel scanner, a straightforward task for a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds targeting dependent claim 12 (detecting saturated pixels) by combining Fisker/Szeliski/Matsumoto with Yamada or Suzuki, and grounds further combining the Thiel references with Fisker to supply other claim limitations.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d). Although the primary reference Fisker was considered by the Examiner during prosecution, the secondary references (e.g., Szeliski, Matsumoto, Yamada, Suzuki) were not. Petitioner contended that these new references teach the very limitations that were added to the claims to overcome the Examiner's rejections. Petitioner asserted the Examiner performed only a limited search and did not have the benefit of these key references, and thus the petition raises substantially new arguments and art that were not previously considered by the Office.

5. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-5, 8-10, 12, 15-16, 18, 21-22, 24, 26, 28, and 29 of the ’244 patent as unpatentable.