3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2020-00174
• Patent #: 8,102,538
• Filed: December 9, 2019
• Petitioner(s): 3Shape As and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1-2

2. Patent Overview

• Title: Device, system and method for determining surface topology and color
• Brief Description: The ’538 patent discloses a device for determining the three-dimensional surface topology and associated color of an object, such as a tooth. The device uses an optical scanner to provide depth data and a separate imaging means to provide color data, with both components maintaining a substantially fixed spatial disposition relative to the object during operation.

3. Grounds for Unpatentability

Ground 1: Anticipation over Gühring - Claims 1-2 are anticipated by Gühring under 35 U.S.C. §102.

• Prior Art Relied Upon: Gühring (J. Gühring, Dense 3-D Surface Acquisition By Structured Light Using Off-The-Shelf Components, 4309 PROC. SPIEE 220-231 (2000)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gühring, which describes an LCD stripe projection system, discloses every limitation of claims 1 and 2. Gühring’s system functions as an “optical scanner” by projecting light patterns to acquire “dense 3-D data” (depth data). It also serves as an “imaging means” by projecting sequential red, green, and blue light to capture “registered color images” using monochrome CCD cameras. Petitioner asserted that Gühring’s process of acquiring color and depth data for large objects “in a matter of seconds” is substantially simultaneous, satisfying the limitation that the device maintains a fixed spatial disposition during operation. For claim 2, Petitioner contended that Gühring’s projector and camera systems each have lenses and operate with illumination and detection paths that have conjugate focal planes, thus meeting the “confocal imaging techniques” limitation.

Ground 2: Obviousness over Moermann in view of Gühring - Claims 1-2 are obvious over Moermann in view of Gühring under 35 U.S.C. §103.

• Prior Art Relied Upon: Moermann (Patent 4,575,805) and Gühring.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Moermann discloses a non-contact scan-head for dental applications that obtains 3D contour data (depth data) using triangulation methods, meeting the "optical scanner" limitation of claim 1. However, Moermann lacks a system for capturing color data. Petitioner argued that Gühring remedies this deficiency by teaching an imaging means for acquiring registered color data and associating it with 3D surface data.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Moermann and Gühring for several reasons. First, both references are in the same field of 3D active triangulation scanning. A POSITA would modify Moermann’s dental scanner to include Gühring’s color imaging capability to achieve the known, desirable goal of color-matching dental prosthetics. Second, Gühring’s "line shift processing" method offered a superior solution to the "correspondence problem" inherent in triangulation scanners like Moermann’s. Finally, Gühring’s method did not require calibration of the projection device, offering a further improvement over Moermann’s system, which requires calibration.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the underlying technologies were compatible. Combining 3D scan data with 2D color images was a conventional technique, and processors capable of associating the data types were commercially available. Moermann’s LED light source could be readily modified with color filters to project sequential colors as taught by Gühring.

Ground 3: Anticipation over Vivid 910 Advertisement - Claims 1-2 are anticipated by the Vivid 910 Advertisement under 35 U.S.C. §102.

• Prior Art Relied Upon: Vivid 910 Advertisement (Minolta Non-Contact 3-D Digitizer Vivid 910 Advertisement (June 8, 2004)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued the Vivid 910 Advertisement for a commercial 3D scanner discloses all limitations of the challenged claims. The advertisement explicitly states the device captures both the "contour of the surface" (depth data) and a "brilliant (24-bit) color image... at the same time by the same CCD." This directly teaches an optical scanner and an imaging means operating with a fixed spatial disposition. The Vivid 910 uses a laser stripe method for 3D scanning and captures the color image by scanning through an RGB filter while the laser is off, a process fast enough to be considered simultaneous. For claim 2, Petitioner asserted that the device’s use of an emitting lens and a receiving lens for the CCD camera creates illumination and detection paths with conjugate focal planes, thereby employing “confocal imaging techniques.”

4. Key Claim Construction Positions

Petitioner asserted that several claim terms were disputed in a co-pending ITC investigation and proposed constructions that are central to its invalidity arguments.

• "optical scanner" (claims 1-2): Petitioner argued this is a means-plus-function term under §112, ¶6, requiring a structure of a "confocal optical system" with specific components (lasers, image sensor, spatial filter) and performing the function of "providing depth data."
• "imaging means" (claims 1-2): Petitioner also argued this is a means-plus-function term under §112, ¶6. It requires a structure of specific light sources (e.g., sequential color or separate white light), optics, and an image sensor, performing the function of "providing two-dimensional color image data."
• "maintaining a spatial disposition...substantially fixed during operation" (claims 1-2): Petitioner construed this phrase to mean the device is held fixed during the separate operations of the optical scanner and imaging means. This construction contrasts with the Patent Owner's view that the operations must be simultaneous.
• "confocal imaging techniques" (claim 2): Petitioner proposed this term means "techniques that use point illumination and point detection," based on disclosures in the ’538 patent specification.

5. Arguments Regarding Discretionary Denial

Petitioner argued that the Board should not exercise its discretion to deny institution under either §314(a) or §325(d).

• §314(a) (Fintiv Factors): Petitioner asserted that the co-pending Delaware litigation was stayed and at an early stage with no trial date set, and the related ITC investigation cannot invalidate a patent. Therefore, denying institution would not promote the efficient administration of justice.
• §325(d) (Prior Art and Arguments): Petitioner argued that none of the prior art references asserted in the petition (Gühring, Moermann, or the Vivid 910 Advertisement) were considered by the USPTO examiner during the prosecution of the ’538 patent. As the arguments and evidence are new, denial under §325(d) would be inappropriate.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-2 of Patent 8,102,538 as unpatentable.