3Shape AS 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 discloses a method for determining the surface topology of a 3D structure, such as teeth, using confocal imaging. The method involves projecting an array of light beams, repeatedly changing the position of the focal planes relative to the structure, and detecting the intensity of returned light to generate topology data.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Ishihara (Patent 5,737,084) and Gmitro (a 1992 journal article on confocal microscopy through a fiber-optic bundle).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ishihara taught a confocal imaging system that met most limitations of claim 1, including providing an array of light beams, changing focal planes relative to an object, detecting returned light intensity, and generating topology data. However, Ishihara did not explicitly disclose a "probing face." Gmitro allegedly supplied this missing element by teaching a confocal microscope using a flexible fiber-optic bundle with a probing face to image samples that are not easily accessible, such as biological specimens inside the human body. Dependent claims 2-4 and 13 were also allegedly taught by Ishihara's disclosure of splitting a parent beam, using polarizers, and combining data from different Z-positions.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to overcome a known limitation in systems like Ishihara's, which required moving the object on a microscope stage. Gmitro taught using a fiber-optic probe to extend the reach of confocal microscopy to inaccessible areas (like a patient's mouth), providing greater flexibility. This modification would have been a known technique to improve a known device for a predictable result.
  • Expectation of Success: Both Ishihara and Gmitro related to confocal imaging systems with similar components. Petitioner contended that incorporating Gmitro's fiber-optic bundle into Ishihara's system would have been a simple substitution or addition with a high expectation of success.

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

• Prior Art Relied Upon: Tiziani (a 1996 journal article on confocal microscopy with microlenses), Gmitro (as in Ground 1), and Kino (WO 88/07695).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Tiziani disclosed a base confocal system using a microlens array to generate spots and measure topography. As in Ground 1, Gmitro was cited to supply the "probing face" limitation. The combination of Tiziani and Gmitro, however, did not explicitly teach changing focal plane position via the focusing optics or polarizing the incident light. Petitioner argued Kino supplied these features by teaching that either the object or the objective lens could be moved to scan different focal planes and by disclosing the use of a polarizer to reduce stray light and improve image quality.
  • Motivation to Combine: A POSITA would have been motivated to combine Tiziani with Gmitro for the same reasons of accessibility as in Ground 1. A POSITA would have further incorporated Kino's teachings for two reasons: (1) to add a translation mechanism to the optics, which avoids the need to move the sample (a known problem, especially for biological samples), and (2) to add a polarizer, a known technique to solve the common problem of stray light degrading image quality in confocal systems.
  • Expectation of Success: The combination involved applying known solutions (a probe, a translation mechanism, a polarizer) to solve known problems in confocal systems. Petitioner argued that since the components and principles in Tiziani, Gmitro, and Kino were all well-understood in the field, a POSITA would have had a reasonable expectation of successfully integrating them.

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

• Prior Art Relied Upon: Tiziani, Gmitro, Kino (as in Ground 3), and Xiao (a 1988 journal article on real-time confocal scanning).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the Tiziani/Gmitro/Kino combination from Ground 3. It further argued that Xiao taught the limitations of dependent claims 4-8. Specifically, Xiao allegedly disclosed filtering returned light and measuring light of the opposite polarization (claim 4) and using light with at least two different components, such as different wavelengths, for chromatic scanning (claims 5-8). Xiao's use of chromatic aberration caused different wavelengths to focus on different planes, achieving 3D imaging.
  • Motivation to Combine: A POSITA would have been motivated to add Xiao's chromatic scanning technique to the Tiziani-based system to gain the known advantages of combined mechanical and chromatic scanning: higher image acquisition speed and simplicity, with an extremely shallow depth of field and better transverse resolution. The polarization technique taught by Xiao was an enhancement of the basic polarization taught by Kino to further reduce interference.
  • Expectation of Success: Petitioner argued Tiziani and Xiao disclosed similar confocal system arrangements, making the modification to include chromatic scanning a matter of mere substitution with a high likelihood of success.

• Additional Grounds: Petitioner asserted obviousness of claims 9-12 and 14-17 over Ishihara/Gmitro/Wenz (Ground 2) and Tiziani/Gmitro/Kino/Wenz (Ground 5). In both grounds, Wenz (Patent 5,440,393) was added to provide teachings specific to dental applications, such as using topology data to construct crowns and bridges.

4. Key Claim Construction Positions

• Petitioner adopted the construction for the term "returned light beams" (claims 1-17) from a Markman Order in a related ITC investigation.
• The proposed construction was "light beams generated by the reflection of incident light beams from the surface of the three-dimensional structure." Petitioner argued the challenged claims would be obvious under this construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and §325(d).
• Under §314(a), Petitioner asserted that this was not a "follow-on" petition, as the ’107 patent had not been challenged in any prior AIA proceeding. Further, the parallel Delaware litigation was stayed, with no discovery or trial having occurred.
• Under §325(d), Petitioner argued that none of the applied prior art references or proposed combinations were considered by the USPTO during original prosecution or a subsequent ex parte reexamination. The arguments presented were described as substantially different from those previously considered by the Examiner.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of the ’107 patent as unpatentable.