3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2019-00157
• Patent #: 8,363,228
• Filed: November 8, 2018
• Petitioner(s): 3Shape As and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1-7 and 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 (3D) surface topology and associated color of an object, such as a patient's teeth. The system uses a handheld device containing an optical scanning system for depth data and a separate imaging system for 2D color data, with a processor to associate the two datasets.

3. Grounds for Unpatentability

Ground 1: Obviousness over Babayoff, Okamoto, and Engelhardt - Claims 1-5, 7, and 26 are obvious over Babayoff in view of Okamoto and Engelhardt.

• Prior Art Relied Upon: Babayoff (WO 00/08415), Okamoto (Japanese Patent Publication No. 2001-82935), and Engelhardt (Patent 6,263,234).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Babayoff, disclosed a handheld confocal scanning system for determining the 3D surface topology of teeth, meeting many limitations of claim 1. However, Babayoff did not teach associating this depth data with color data. Okamoto was argued to supply this missing element, as it disclosed a 3D measurement device that used a confocal system for depth data and a separate, non-confocal system for color image data, along with a processor to associate the two. Finally, while Babayoff and Okamoto disclosed the components, Engelhardt taught integrating functional units, including the processor, directly into the housing of a compact, handheld intraoral probe to create a unitary device.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Babayoff with Okamoto to add the desirable feature of color information to Babayoff's 3D dental scanner. Capturing accurate tooth color is crucial for creating well-matched dental prostheses, a known goal in the art. A POSITA would then be motivated to integrate the processor and imaging systems into a single handheld unit as taught by Engelhardt to improve the device's portability, flexibility, and ease of use, which were known advantages for intraoral scanners.
  • Expectation of Success: Petitioner asserted a high expectation of success. Okamoto already demonstrated a working system that successfully associated depth and color data. Furthermore, Engelhardt showed the feasibility of integrating processing components into a compact intraoral scanner. Combining these known elements to achieve a predictable result—a handheld color 3D scanner—would have been a routine design choice for a POSITA.

Ground 2: Obviousness over Babayoff, Okamoto, Engelhardt, and Sachdeva - Claim 6 is obvious over Babayoff in view of Okamoto, Engelhardt, and Sachdeva.

• Prior Art Relied Upon: Babayoff (WO 00/08415), Okamoto (Japanese Patent Publication No. 2001-82935), Engelhardt (Patent 6,263,234), and Sachdeva (Application # 2004/0197727).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the additional limitation of dependent claim 6, which required associating the depth and color data using an "alignment procedure comprising an optical character recognition technique." Petitioner argued that Sachdeva explicitly disclosed this feature. Sachdeva described a handheld intraoral scanner that associated separate 3D scan data and color image data using an "alignment transformation process" that involved "X, Y and Z translations and rotations to place the data sets into a common coordinate system," which it identified as an OCR technique.
  • Motivation to Combine: A POSITA, having created the combined handheld color 3D scanner from Babayoff, Okamoto, and Engelhardt, would be motivated to implement a known and effective method for aligning the separate data sets. Sachdeva, being in the same field of intraoral dental scanning, provided a clear example of using OCR techniques for this exact purpose. Therefore, it would have been obvious to employ the alignment method taught by Sachdeva in the system from Ground 1 to achieve the data association required by the claims.
  • Expectation of Success: Success would have been reasonably expected because Sachdeva already disclosed a processor that associates color and depth data using OCR techniques. Implementing this known alignment method in the combined system of Ground 1 would have been a predictable application of conventional technology to achieve the desired data fusion.

4. Key Claim Construction Positions

• Petitioner argued that several key claim phrases, including "a scanning system configured to provide depth data," "imaging system configured to provide color image data," and "a processor configured to associate the depth data with the color image data," should be construed as means-plus-function limitations under 35 U.S.C. §112, ¶6.
• This construction was asserted because the phrases allegedly failed to recite sufficiently definite structure for performing their stated functions. Under this interpretation, the scope of the claims would be limited to the corresponding structures disclosed in the ’228 patent's specification and their equivalents, which Petitioner contended were all present in the prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a), noting that a parallel Delaware litigation was stayed and that any decision from a co-pending ITC investigation would have no preclusive effect on the IPR proceeding.
• Petitioner also argued against denial under §325(d), asserting that the primary prior art references and the specific obviousness rationales presented in the petition were never before the Examiner during the original prosecution. Specifically, the Examiner was not presented with Okamoto, which explicitly taught associating color and depth data, a key element the Patent Owner had previously used to distinguish its invention from other prior art (Mueller).

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-7 and 26 of the ’228 patent as unpatentable under 35 U.S.C. §103.