3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2020-00223
• Patent #: 7,156,661
• Filed: December 9, 2019
• Petitioner(s): 3Shape A/S 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 discloses methods for analyzing orthodontic treatment by matching 3D computer models of a patient's jaw taken at different times. The method involves using stable anatomical features, such as palatal rugae, as reference points to superimpose the models and calculate tooth movement.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: Ashmore (a 2002 journal article titled "A 3-Dimensional Analysis of Molar Movement During Headgear Treatment") and Jovanovski (a 2000 publication on analyzing oral structures from 3D data).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ashmore taught nearly all limitations of independent claim 1. Ashmore disclosed a method to measure tooth movement by superimposing initial and subsequent 3D computer models of a patient's jaw. Crucially, Ashmore taught identifying and using "palatal rugae points as the registration landmarks"—a stable region of the jaw other than the teeth—to perform a "best-fit superimposition" and calculate positional differences in teeth over time. Petitioner contended that the only limitation not explicitly taught by Ashmore was step [1.6], "matching the first and second computer models as a whole, using the matched regions." This limitation, Petitioner asserted, was supplied by Jovanovski. Jovanovski taught a two-step matching process to improve accuracy: first, an initial "point-to-point fit" using landmarks (analogous to Ashmore's entire method), followed by a second, refining step that matches the models as a whole using a "shape-based method" applied to all data points. Petitioner asserted this second step directly corresponded to the missing limitation. Dependent claims were argued to be obvious as they recited features also taught by the combination, such as displaying positional differences (claim 2) and selecting the palatal rugae as the matched region (claim 6).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Ashmore with Jovanovski to improve the accuracy of Ashmore's method. Both references were in the same field of 3D dental modeling, addressed the problem of accurately comparing models over time, and used stable anatomical regions for registration. Ashmore itself acknowledged the need for improved accuracy. Jovanovski explicitly taught that its second, "shape-based" matching step was for "refining" an "initial approximation" obtained from a landmark-based method like Ashmore's. A POSITA would have recognized that applying Jovanovski’s refinement step to Ashmore's initial match was a logical and obvious way to achieve the shared goal of higher accuracy.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The proposed modification involved applying a known refinement technique (Jovanovski's second step) to a known initial matching method (Ashmore's) to achieve a predictable improvement in accuracy. Combining known methods in the field of virtual modeling to produce a predictable result was well within the skill of a POSITA.

4. Key Claim Construction Positions

Petitioner asserted that several claim terms were disputed in a related International Trade Commission (ITC) investigation and adopted the constructions rendered by the Administrative Law Judge (ALJ) in that proceeding.

• "reference point": Construed as "a point used to determine the position of a computer model, or part thereof, relative to another computer model, or part thereof." Petitioner argued Ashmore's "digitized rugae points" met this construction as they were used to determine the relative position of the models.
• "matching/match … using the identified reference points" (as in claim 1.5): Construed as "using the identified reference points to determine the position of a region of the first computer model relative to the corresponding region of the second computer model." Petitioner argued this construction focused on determining position, not necessarily moving the models, a distinction that brought Ashmore's method within the scope of the claim.
• "region(s)": Construed as "area." Petitioner argued Ashmore’s "palatal rugae" constituted an "area" of the jaw other than the teeth, satisfying this limitation.

5. Arguments Regarding Discretionary Denial

Petitioner argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §314(a) or §325(d).

• Arguments against §314(a) Denial (Fintiv): Petitioner contended that the co-pending Delaware litigation was stayed and the ITC investigation did not warrant denial. The petition challenged a broader set of claims (1-4, 6, 19-22, and 26) than those at issue in the ITC investigation (only claims 1-2 and 19-20), which weighed against denial. Furthermore, Petitioner noted the ITC lacks the authority to invalidate a patent, making IPR a more efficient forum for resolving the validity challenge.
• Arguments against §325(d) Denial: Petitioner argued that denial was not warranted because the examiner never considered either Ashmore or Jovanovski during the prosecution of the ’661 patent. The prior art combination presented in the petition was therefore not cumulative to the art previously evaluated by the Patent Office, and it raised substantial new questions of patentability.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 6, 19-22, and 26 of Patent 7,156,661 as unpatentable.