3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2019-00154
• Patent #: 8,363,228
• Filed: November 10, 2018
• Petitioner(s): 3Shape As and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1-26

2. Patent Overview

• Title: System for Determining Surface Topology and Associated Color
• Brief Description: The ’228 patent discloses a system for determining the three-dimensional surface topology and color of an object, such as a patient's teeth. The system uses a handheld device with an optical scanning system to capture depth data and a separate imaging system to capture two-dimensional color data, which are then associated by a processor.

3. Grounds for Unpatentability

Ground 1: Claims 1-26 are obvious over Babayoff in view of Petersen.

• Prior Art Relied Upon: Babayoff (Application # 2006/0001739) and Petersen (WO 02/056756).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Babayoff, an ancestral publication to the ’228 patent, disclosed all features of the challenged claims except for physically locating the processor within the hand-held device. Babayoff was asserted to teach a system with separate scanning and color imaging components whose data is combined by a processor, but depicted this processor as part of a physically separate computer station. Petersen was alleged to cure this deficiency by disclosing a hand-held medical diagnostic instrument, including for dental use, that integrates an image capture and processing system within a single unit.
  • Motivation to Combine: A POSITA would combine these references to satisfy the known need for a unitary, portable dental imaging device with integrated processing capabilities, as taught by Petersen. Petitioner contended that moving the processor from a separate station into the handheld device was an obvious design choice to improve portability and efficiency, representing a simple combination of known elements for a predictable result.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because Petersen taught that a processor with functions similar to Babayoff's (e.g., comparing, transmitting images) could be incorporated into a hand-held intraoral imaging instrument. This integration involved applying known engineering principles to reduce size and combine separate components into a single housing.

Ground 2: Claims 1-26 are obvious over Babayoff in view of Fisker.

• Prior Art Relied Upon: Babayoff (Application # 2006/0001739) and Fisker (WO 2010/145669).
• Core Argument for this Ground:
  • Prior Art Mapping: Similar to Ground 1, Petitioner asserted that Babayoff taught all claim elements except for the integrated processor in the handheld device. Fisker was argued to supply the missing element by disclosing a hand-held device for 3D intraoral scanning that explicitly includes data processing means within the scanner housing.
  • Motivation to Combine: A POSITA would combine Babayoff with Fisker to achieve the benefits articulated in Fisker, namely providing short scan times, real-time processing, and live feedback to the operator by locating the processor close to the optical components. This modification would also reduce the data transfer rate to an external cart or workstation, addressing a known challenge in high-resolution 3D scanning.
  • Expectation of Success: Success was predictable because Fisker explicitly taught incorporating a processor into a handheld intraoral scanner to perform complex data transformations. The combination required only the application of ordinary skill to integrate Babayoff's processing functions into a handheld device as shown by Fisker.

Ground 3: Claims 1-26 are obvious over Babayoff in view of Engelhardt.

• Prior Art Relied Upon: Babayoff (Application # 2006/0001739) and Engelhardt (Patent 6,263,234).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner again relied on Babayoff for the base system and asserted Engelhardt disclosed the missing integrated processor. Engelhardt taught a confocal surface-measuring device with an intraoral probe (a hand-held device) for measuring the surface profile of teeth. Engelhardt explicitly stated that functional units, including the processor, could be arranged within the probe's housing by miniaturizing them.
  • Motivation to Combine: A POSITA would be motivated to combine the references to create a more compact and integrated device, consistent with the trend toward miniaturization in the field. Engelhardt directly suggested integrating the processor into the housing of a dental probe to create a self-contained unit, providing a clear reason to modify Babayoff's system.
  • Expectation of Success: A POSITA would expect success because Engelhardt taught that a processor for computing a 3D surface profile could be integrated into a handheld probe. This demonstrated the technical feasibility of placing Babayoff's processor, which performs analogous functions, into its handheld device.

4. Key Claim Construction Positions

• Means-Plus-Function: Petitioner argued that several key claim phrases, despite lacking the word "means," should be construed under 35 U.S.C. §112, ¶6 because they failed to recite sufficiently definite structure for performing their claimed functions. These terms included:
  • "a scanning system configured to provide depth data"
  • "imaging system configured to provide color image data"
  • "a processor configured to associate the depth data with the color image data"
• "handheld device comprising... a processor": Petitioner argued this phrase should be construed to mean a single, unitary device that can be held in a user’s hand and physically includes the processor. This construction excludes systems where the processor is physically separate from the handheld scanning portion, a distinction central to Petitioner's priority date and obviousness arguments.

5. Key Technical Contentions (Beyond Claim Construction)

• Invalid Priority Claim: A central argument of the petition was that the ’228 patent was not entitled to the priority date of its ancestral applications (dating to 2004-2005). Petitioner contended that the key limitation of a "hand-held device comprising... a processor" was unsupported new matter added during prosecution in 2012. The ancestral applications were argued to consistently disclose the processor as being physically separate from the handheld optical device (e.g., in a separate PC). This argument, if successful, would establish the publication of one of those ancestral applications, Babayoff, as prior art against the challenged claims.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) was unwarranted. It asserted that co-pending litigation in Delaware was stayed and that this petition raised different issues and claim construction standards than the litigation. Petitioner further argued that the grounds were not cumulative to art considered during prosecution because the Examiner never cited or relied upon art that taught the key limitation of physically locating a processor within a hand-held scanning device. Therefore, the core of the asserted obviousness combinations was never before the Office.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-26 of the ’228 patent as unpatentable under 35 U.S.C. §103.