3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2019-00134
• Patent #: 9,299,192
• Filed: November 9, 2018
• Petitioner(s): 3Shape As and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1-5, 8-32

2. Patent Overview

• Title: Generating a Modified Virtual Model of a Physical Structure
• Brief Description: The ’192 patent discloses a method and system for modifying a 3D virtual model of a physical object, such as a patient's intra-oral cavity. The technology addresses correcting a deficient or incomplete initial model by rescanning a portion of the object to create a second, more accurate virtual model, which then replaces the corresponding deficient portion of the first model.

3. Grounds for Unpatentability

Ground 1: Obviousness over Paley and Kriveshko - Claims 1-5, 8-13, 15-23, and 25-32 are obvious over Paley in view of Kriveshko.

• Prior Art Relied Upon: Paley (Application # 2007/0172112) and Kriveshko (Application # 2007/0236494).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Paley discloses all elements of the independent claims except for the specific technical method of integrating new scan data. Paley teaches generating a first 3D virtual model from scan data, which may "fail to properly represent" a physical part due to "omitted or missing scan data." Paley further discloses a user selecting the deficient region and initiating a rescan via a "landing mode" to correct the model. However, Paley is not explicit about how the newly acquired scan data is formed into a model and integrated. Petitioner contended that Kriveshko, which Paley expressly incorporates by reference to explain its "landing mode," supplies this missing detail. Kriveshko teaches assembling the new scan data into a "supplemental three-dimensional model" (the claimed "second virtual model") and then registering it with the original model, replacing the deficient portion.
  • Motivation to Combine: The primary motivation was Paley’s explicit incorporation by reference of the application that led to Kriveshko to describe the technical process for reacquiring scan data in its "landing mode." A POSITA would have been directly guided by Paley to consult Kriveshko to implement the correction process.
  • Expectation of Success: A POSITA would have a high expectation of success because Paley directs the combination, the systems disclosed in both references are nearly identical, and they share a common named inventor.

Ground 2: Obviousness over Paley, Kriveshko, and Babayoff - Claim 14 is obvious over Paley in view of Kriveshko and Babayoff.

• Prior Art Relied Upon: Paley (Application # 2007/0172112), Kriveshko (Application # 2007/0236494), and Babayoff (Application # 2003/0232302).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination in Ground 1. Dependent claim 14 adds the limitation that the scanned physical part was initially obscured by material like "saliva, debris, or blood," which has been removed before the second scan. While the Paley/Kriveshko combination teaches rescanning to correct deficiencies, it does not explicitly mention clearing such obstructions. Petitioner asserted that Babayoff addresses this known problem in intraoral scanning by teaching an auxiliary device with gas ejection or suction to remove such materials from tooth surfaces to ensure a clear image.
  • Motivation to Combine: A POSITA would combine Babayoff's solution with the Paley/Kriveshko system to solve the well-known and predictable problem of fluids impairing scan quality in the field of dental imaging. Improving scan data quality is a simple and desirable goal.
  • Expectation of Success: Success was expected because incorporating Babayoff’s device would be a simple mechanical addition to Paley's similar intraoral scanner. Babayoff itself states its technology is applicable to any existing imaging instrument.

Ground 3: Obviousness over Paley, Kriveshko, and Chishti - Claim 24 is obvious over Paley in view of Kriveshko and Chishti.

• Prior Art Relied Upon: Paley (Application # 2007/0172112), Kriveshko (Application # 2007/0236494), and Chishti (Patent 6,227,850).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also builds on the combination in Ground 1. Dependent claim 24 adds the step of "designing an orthodontic treatment plan based on said modified virtual model." Paley discloses using its corrected models to manufacture orthodontic "appliances" but does not explicitly teach the design of a full treatment plan. Petitioner argued that Chishti remedies this by teaching a method for designing an orthodontic treatment plan using a 3D model of teeth.
  • Motivation to Combine: A POSITA would be motivated to add Chishti's functionality to the Paley/Kriveshko system because designing treatment plans is a well-known and primary use for 3D dental models. This combination would improve the overall utility of Paley's system by adding a conventional, logical next step.
  • Expectation of Success: A POSITA would expect success, as the combination would amount to a simple software supplementation. Both Paley and Chishti describe software systems for analyzing 3D virtual models, making their integration straightforward.

4. Key Claim Construction Positions

• "virtual model" / "3D virtual model": Petitioner argued these terms are used interchangeably in the ’192 patent and should be construed to mean "a virtual representation in a computer environment of a real object."
• "second virtual model" / "second 3D virtual model": Petitioner contended these terms should be construed as a "singular and collected 'virtual representation in a computer environment of a real object.'" This construction was argued to be distinct from merely "additional 3D data," a position supported by the prosecution history where the Patent Owner amended the claims from the latter to the former to overcome a rejection, thereby confirming the "second virtual model" is structurally more than just raw data.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) was inappropriate. It asserted that the petition was not a "follow-on" petition, and the trial in a parallel district court case was scheduled for a date that made a stay likely if IPR was instituted. Further, it noted the differing claim construction standards between the PTAB (broadest reasonable interpretation) and the district court rendered the issues non-coextensive.
• Petitioner also argued against denial under §325(d), stating that none of the prior art references relied upon in the petition (Paley, Kriveshko, Babayoff, and Chishti) were cited or applied during the original prosecution of the ’192 patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5 and 8-32 of the ’192 patent as unpatentable.