PTAB

IPR2019-00155

3Shape AS v. Align Technology Inc

Key Events

Petition

petition

Title: System for Determining Surface Topology and Color of Dental Structures
Brief Description: The ’456 patent describes a system for determining the three-dimensional surface topology and associated color of a dental structure. The system uses a hand-held device containing a scanning system to provide depth data and an imaging system to provide color image data, along with a processor configured to associate the two data sets.

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, a publication from the ’456 patent’s own family, discloses all elements of the challenged claims except for the processor being physically located within the hand-held device. Babayoff was asserted to teach a system with an external processor connected to the hand-held scanner. Petersen was argued to cure this deficiency by disclosing a hand-held medical diagnostic instrument that includes an internal processor for capturing, storing, and processing image data.
- Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references because both relate to digital imaging diagnostics, and Petersen provides an express motivation for a unitary hand-held device that combines image capture and processing. Integrating a separate processor into a hand-held device was presented as a predictable solution to improve portability and efficiency, representing an obvious design choice.
- Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success because Petersen teaches that a processor with functions similar to Babayoff's (e.g., comparing and transmitting images) can be successfully incorporated into a hand-held intraoral imaging instrument.

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 relied on Babayoff for teaching the majority of the claimed system. Fisker was introduced to supply the missing element of an integrated processor, as it discloses a hand-held 3D intraoral scanner with internal data processing means. Fisker explicitly teaches that processing should be provided within the scanner housing to enable real-time processing and reduce data transfer rates.
- Motivation to Combine: A POSITA would combine the references to achieve the known benefits described in Fisker, such as shorter scan times and live feedback to the operator. Petitioner argued that combining the known functionality of Babayoff’s system with the known technique of integrating a processor, as taught by Fisker, was a predictable design improvement.
- Expectation of Success: Success would be expected because Fisker demonstrates the feasibility of incorporating a processor capable of complex data transformation into a hand-held intraoral imaging instrument, a task similar to that performed by the processor in Babayoff.

Prior Art Relied Upon: Babayoff (Application # 2006/0001739) and Engelhardt (Patent 6,263,234).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner again used Babayoff as the primary reference and argued that Engelhardt discloses the final element. Engelhardt describes a confocal surface-measuring device with a hand-held intraoral probe and explicitly contemplates that the processor could be arranged within the probe's housing by miniaturizing the functional units.
- Motivation to Combine: A POSITA would be motivated to modify Babayoff’s device as suggested by Engelhardt to create a more compact, unitary dental imaging device with integrated processing capabilities, which was a recognized need in the art.
- Expectation of Success: The petition argued for a high expectation of success, as Engelhardt explicitly teaches that integrating a processor for control, transformation, and data storage into a hand-held probe is conceivable and achievable through miniaturization.

"a handheld device comprising ... a processor": Petitioner argued this phrase should be construed to mean a unitary device that can be held in a user's hand and includes a processor, where the processor is not physically separated from the device. This construction is central to Petitioner's argument that the ancestral applications, which allegedly only disclose an external processor, do not provide written description support for the claims.
Means-Plus-Function Interpretations: Petitioner contended that several key claim phrases, while not using the word "means," are functional limitations lacking sufficient corresponding structure in the specification and should be construed under 35 U.S.C. §112, ¶6. These phrases include:
- "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"

Lack of Priority Date Entitlement: The petition’s central technical argument was that claims 1-18 of the ’456 patent are not entitled to the priority date of their ancestral applications. Petitioner argued that the original specifications, dating back to 2004, only disclose a system with a processor physically separate from the hand-held scanner (e.g., in an external PC). The limitation requiring the processor to be part of the hand-held device was allegedly added as unsupported new matter during prosecution in 2012. Therefore, the effective filing date of the claims is September 14, 2012, which makes the asserted prior art, including Babayoff (published 2006), Petersen (2002), Fisker (2010), and Engelhardt (2001), valid prior art against the claims.

Petitioner argued that discretionary denial would be improper.
Against §314(a) Denial (Fintiv factors): The petition asserted that co-pending district court litigation was stayed and that the IPR presents different issues, including different claim construction standards, than the parallel litigation.
Against §325(d) Denial: Petitioner contended that the core arguments and prior art presented in the petition were not previously considered by the USPTO. Specifically, the examiner never considered prior art that explicitly teaches integrating a processor into a hand-held device and never addressed the critical issue of whether the claims were entitled to their claimed priority date based on the written description in the ancestral applications.

Petitioner requests institution of inter partes review and cancellation of claims 1-18 of the ’456 patent as unpatentable.