3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2020-00222
• Patent #: 7,156,661
• Filed: December 9, 2019
• Petitioner(s): 3Shape As and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1-4, 6, 19-22, and 26

2. Patent Overview

• Title: Method for Matching Computer Models of a Jaw
• Brief Description: The ’661 patent relates to methods for analyzing orthodontic treatment by matching digital computer models of a patient's jaw. The system involves taking initial and subsequent digital models, superimposing them in a virtual space using non-tooth regions as stable references, and calculating the movement of each tooth.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-4 and 19-22 - Claims are anticipated under 35 U.S.C. §102 by Commer.

• Prior Art Relied Upon: Commer (P. Commer et al., “Construction and testing of a computer-based intraoral laser scanner for determining tooth positions,” Medical Engineering & Physics (2000)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Commer, which describes a computer-based intraoral laser scanning system for orthodontic applications, discloses every limitation of the independent claims. Commer teaches a three-step process for measuring tooth movement by scanning initial and subsequent physical jaw casts to create computer models. This process involves matching the palate surfaces of the two models using a "surface-surface matching" technique to establish a common reference frame, applying the resulting transformation to the teeth of the second model, and then performing a final matching step to calculate movement parameters. Petitioner contended this process inherently discloses loading models (Element 1.1), identifying reference points on a non-tooth region (the palate, Element 1.3), matching those regions (Element 1.5), matching the models as a whole (Element 1.6), and calculating positional differences using the matched palate as a non-moving reference region (Element 1.7). Petitioner asserted that dependent claims are also disclosed, as Commer’s system displays results, places models in a common coordinate system, and calculates translation/rotation parameters.

Ground 2: Obviousness over Commer and Ashmore - Claims 1-4, 6, 19-22, and 26 are obvious over Commer in view of Ashmore.

• Prior Art Relied Upon: Commer (as cited above) and Ashmore (J. Ashmore et al., “A 3-Dimensional Analysis of Molar Movement During Headgear Treatment,” American Journal of Orthodontics and Dentofacial Orthopedics (Jan. 2002)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Commer teaches the core method of matching dental models using a non-tooth region (the entire palate). Ashmore was introduced to supply the specific teaching of using a known stable anatomical structure—the medial palatal rugae—as the landmarks for superimposing 3D dental models to accurately measure tooth movement. The combination of Commer’s method with Ashmore’s specific reference region allegedly renders the claims obvious. This combination is particularly relevant to dependent claims 6 and 26, which explicitly recite using "one or more rugae on a palate" as the matched region.
  • Motivation to Combine: A POSITA would combine Commer and Ashmore to improve the accuracy of Commer's matching process and reduce processing time. Both references are in the same field of orthodontics and address the identical problem of accurately registering dental models over time. Ashmore explicitly teaches that using stable landmarks like medial palatal rugae provides more accurate results and mitigates errors from unstable portions of the palate. A POSITA would recognize this as a direct and logical improvement to Commer’s less specific method.
  • Expectation of Success: A POSITA would have a high expectation of success because the combination involves the simple substitution of a known, stable reference region (medial palatal rugae from Ashmore) into a known matching system (Commer). This modification would predictably improve the accuracy and efficiency of the system. Virtual modeling is a predictable art, and applying a more stable landmark for registration is a straightforward design choice, not an inventive step.

4. Key Claim Construction Positions

• "reference point": Petitioner proposed construing this term as "a point on a stable anatomical structure." This construction was argued to be consistent with the ’661 patent's disclosure of using stable structures like palatal rugae and was central to the obviousness argument, as Ashmore explicitly teaches using such stable points for accurate model matching.
• "region(s)": Petitioner proposed the construction "portion(s)," arguing it is consistent with the specification indicating the reference region is a part of the jaw model, not the entire model.
• "matching/match ... using the identified reference points": Petitioner proposed this term means "positioning/position ... using the identified points on the stable anatomical structures." This construction was asserted to align with the patent's description of applying a transform to position the models so they align, a key step taught in both Commer and Ashmore.

5. Arguments Regarding Discretionary Denial

• §314(a) (Parallel Litigation): Petitioner argued against discretionary denial under the Fintiv factors. It was noted that the related Delaware litigation was stayed with no scheduled trial date. Further, the co-pending ITC investigation involved a different and narrower set of claims (only claims 1-2 and 19-20), a factor that Petitioner argued weighs against denial.
• §325(d) (Prior Art Considered by USPTO): Petitioner argued denial was inappropriate because the primary references, Commer and Ashmore, were never considered by the examiner during prosecution. The petition asserted that the invalidity arguments were therefore not the same or substantially the same as those previously presented to the Office. Neither of the references applied by the examiner (Sachdeva and Snow) was cited for disclosing the use of palatal rugae as a stable reference point or for conducting a second matching step of the models as a whole, as taught by Commer.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 1-4, 6, 19-22, and 26 of Patent 7,156,661 as unpatentable.