3Shape A/S v. Align Technology, Inc.

1. Case Identification

• Case #: IPR2019-00149
• Patent #: 7,092,107
• Filed: November 12, 2018
• Petitioner(s): 3Shape A/S and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1-17

2. Patent Overview

• Title: Method for Non-Contact Imaging of Three-Dimensional Structures
• Brief Description: The ’107 patent relates to a method for non-contact, confocal imaging to determine the surface topology of a three-dimensional structure. The technology is described as being useful for applications such as the direct surveying of teeth.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ishihara and Gmitro - Claims 1-4 and 13 are obvious over Ishihara in view of Gmitro.

• Prior Art Relied Upon: Ishihara (Patent 5,737,084) and Gmitro ("Confocal microscopy through a fiber-optic imaging bundle," a 1992 publication).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ishihara disclosed a confocal imaging system for measuring three-dimensional shapes that taught nearly all elements of independent claim 1. This included providing an array of incident light beams, generating illuminated spots, detecting the intensity of returned beams, and repeatedly changing the distance to the object to find the position of maximum intensity. However, Ishihara did not explicitly disclose a "probing face." Gmitro was argued to supply this missing element by teaching a confocal imaging system that uses a flexible fiber-optic bundle, functioning as a probe with a probing face, to image samples that are not easily accessible, including biological specimens.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Ishihara with Gmitro because both references are in the field of confocal microscopy. Petitioner asserted that Gmitro addressed a known problem inherent in systems like Ishihara's—the difficulty of imaging objects not placed on a fixed microscope stage. A POSITA would have been motivated to incorporate Gmitro’s probe to improve the applicability of Ishihara’s system to hard-to-reach areas, such as inside a patient's mouth, to yield predictable results.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because Gmitro expressly taught the use and integration of a probing member with a confocal imaging system. The components and principles of the systems in Ishihara and Gmitro were sufficiently analogous to make the combination straightforward.

Ground 2: Obviousness over Tiziani, Gmitro, and Kino - Claims 1-3 and 13 are obvious over Tiziani in view of Gmitro and Kino.

• Prior Art Relied Upon: Tiziani ("Theoretical analysis of confocal microscopy with microlenses," a 1996 publication), Gmitro, and Kino (WO 88/07695).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Tiziani disclosed a confocal imaging arrangement with a microlens array to measure three-dimensional topography, teaching the core elements of claim 1. As in Ground 1, Gmitro was cited to provide the claimed "probing face." The petition argued that the combination of Tiziani and Gmitro did not explicitly teach changing the focal plane position by the focusing optics, as Tiziani's system moved the object itself. Kino was introduced to cure this deficiency, as it taught that for mechanical scanning, moving the objective lens and moving the object were known, interchangeable ways to focus on various planes. Kino also disclosed polarizing the incident light beams, satisfying a limitation of dependent claim 3.
  • Motivation to Combine: The motivation to combine Tiziani and Gmitro was to add a probe for imaging inaccessible objects. A POSITA would have been motivated to further combine this with Kino's teachings to replace object movement with lens movement. This modification was a known technique to avoid disturbing the sample, which is especially desirable for imaging biological samples. The motivation to add a polarizer from Kino was to reduce stray light and improve image quality, a common objective in optical systems.
  • Expectation of Success: Success was reasonably expected because combining these elements involved applying known, interchangeable techniques (probe integration, lens-based scanning, polarization) to a conventional confocal microscopy framework to achieve predictable improvements in versatility and image quality.

Ground 3: Obviousness over Tiziani, Gmitro, Kino, and Xiao - Claims 4-8 are obvious over Tiziani in view of Gmitro, Kino, and Xiao.

• Prior Art Relied Upon: Tiziani, Gmitro, Kino, and Xiao ("Real-time confocal scanning optical microscope," a 1988 publication).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination of Tiziani, Gmitro, and Kino. Petitioner argued that Xiao supplied the remaining limitations for claims 4-8. Specifically, claim 4 requires filtering returned light beams and measuring light of the opposite polarization, which Xiao taught by using a polarizer/analyzer pair and a quarter-wave plate to rotate polarization by 90°. Claims 5-8 relate to using light with at least two different parameters (e.g., wavelength) to focus on different planes (chromatic scanning). Xiao was argued to teach this by disclosing that chromatic aberration in an objective lens causes different wavelengths of light to focus on different planes.
  • Motivation to Combine: A POSITA would be motivated to add Xiao's chromatic scanning technique to the Tiziani-based system to increase the speed of image acquisition, a stated advantage in Xiao. The motivation to incorporate Xiao's polarization filtering technique was to build upon Kino's basic polarization by implementing a more specific, known method for reducing interference and improving signal detection.
  • Expectation of Success: A POSITA would have reasonably expected success in implementing these features, as both Tiziani and Xiao disclosed similar arrangements of confocal system components. Modifying the Tiziani system to use different wavelengths for focusing or a specific polarization filtering scheme was a matter of applying known optical techniques.

• Additional Grounds: Petitioner asserted further obviousness challenges against dental application claims 9-12 and 14-17 by adding Wenz (Patent 5,440,393), which taught using 3D imaging data to construct dental prosthetics, to the primary combinations of Ishihara/Gmitro and Tiziani/Gmitro/Kino.

4. Key Claim Construction Positions

• Petitioner argued for adopting the construction of the term "returned light beams" (claims 1-17) from a related ITC investigation involving the Patent Owner.
• The proposed construction, adopted from the ITC, was: "light beams generated by the reflection of incident light beams from the surface of the three-dimensional structure." This construction was asserted to be consistent with the patent's specification and was used for all obviousness arguments.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §314(a) or §325(d).
• Regarding §314(a), Petitioner asserted that this was its first challenge to the ’107 patent and not a "follow-on" petition. It also noted that the parallel Delaware litigation was stayed, with no discovery having occurred, and that this petition raises different issues than the litigation.
• Regarding §325(d), Petitioner argued that the references and combinations presented in the petition were not considered during the original prosecution or a subsequent ex parte reexamination. Petitioner contended the reexamination involved substantially different arguments and prior art (e.g., Moermann instead of Gmitro), making the issues raised here novel to the Office.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-17 of Patent 7,092,107 as unpatentable.