3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2020-01622
• Patent #: 9,675,430
• Filed: September 21, 2020
• Petitioner(s): 3Shape As and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1-4 and 6-7

2. Patent Overview

• Title: Confocal Imaging Apparatus
• Brief Description: The ’430 patent discloses a confocal imaging apparatus for intraoral scanning. The system uses an illumination module to generate an array of light beams, focusing optics to direct the beams onto a non-flat focal surface, a translation mechanism to adjust the focal surface, and a detector to measure reflected light to image a three-dimensional object.

3. Grounds for Unpatentability

Ground 1: Obviousness over Berner in view of Ginani - Claims 1-4 and 6-7 are obvious over Berner in view of Ginani.

• Prior Art Relied Upon: Berner (Application # 2010/0085636) and Ginani (an Optical Scanning Sensor System with Submicron Resolution dissertation from 2013).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Berner discloses the core elements of the challenged claims, including an optical system for a confocal microscope suitable for intraoral scanning that features a non-flat focal surface (a key feature of allowance), a plurality of lenses, a translation mechanism (a motor to move a lens), and a method for computationally compensating for distortions caused by the non-flat surface. However, Petitioner contended that Berner fails to explicitly disclose an "illumination module" that generates an array of light beams, instead teaching a single "illumination pattern." Ginani was argued to supply this missing element. Ginani, which describes the well-understood principles of confocal microscopy, explicitly taught using a microlens array to create multiple confocal systems in parallel, thereby generating the claimed "array of light beams" for scanning. Petitioner asserted that combining Ginani's microlens array with Berner's system would render all limitations of the challenged claims obvious. For dependent claims, Berner's lack of a field lens taught the negative limitations of claims 3 and 4, while its integral construction of the illumination source and beam splitter met the distance limitation of claim 6. For claim 7, Petitioner argued that the dimensions disclosed in Berner, or routine scaling for intraoral use, would lead a POSITA to use lenses with a radius less than 13 mm.
  • Motivation to Combine: Petitioner asserted a POSITA would combine the references for several reasons. Both Berner and Ginani were in the same field of compact 3D optical scanners and shared the common objective of miniaturization and scanning immovable objects (like teeth). A POSITA would have been motivated to implement Berner’s "illumination pattern" using a known component like Ginani’s microlens array to achieve parallel scanning, a known technique for increasing speed and field of view. Berner itself suggested compatibility with other 3D scanner types, including those using microlens arrays. Therefore, combining these known elements to achieve their known functions was argued to be a predictable and obvious design choice.
  • Expectation of Success: Petitioner argued a POSITA would have had a reasonable expectation of success because both references already disclosed the fundamental components of confocal systems for surface topology scanning. Incorporating a standard microlens array (from Ginani) into a confocal system (like Berner's) was a routine modification using well-established optical design principles. Petitioner noted that the Patent Owner’s own expert in a related IPR acknowledged the compatibility of Berner's optical configuration with confocal techniques that use microlens arrays.

4. Key Claim Construction Positions

• "confocal imaging apparatus": Petitioner proposed this term should be construed as "an apparatus that provides point illumination of a spot on an object to produce an image detected through a point detector." This construction was argued to be consistent with the specification and the understanding of a POSITA, and it allowed Ginani's teachings on point detection to supplement Berner's system.
• "an illumination module to generate an array of light beams": Petitioner argued this term was governed by 35 U.S.C. §112(f) as a means-plus-function limitation. The proposed function was "to generate an array of light beams arranged in an X-Y Cartesian plane, that propagate along a Z axis." The corresponding structure disclosed in the specification was identified as a grating, a microlens array, an optics expander, or equivalents. This construction was central to the argument that Berner alone did not disclose the limitation, requiring the combination with Ginani's microlens array.
• "translation mechanism...": Petitioner also argued this term invoked §112(f), with the function being "to adjust a location of at least one lens...to displace the non-flat focal surface." The corresponding structure was identified as the motor disclosed in the specification.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial based on the co-pending Delaware Litigation. It asserted that a stay of the litigation was anticipated, and the trial date was uncertain and likely to occur after a Final Written Decision (FWD) from the IPR. Petitioner contended that the district court case was in its early stages with minimal overlap in issues and that it would stipulate not to pursue the same invalidity grounds in district court if the IPR was instituted. Finally, Petitioner claimed the merits of the petition were particularly strong, weighing in favor of institution.
• §325(d) (Same or Substantially Same Art/Arguments): Petitioner argued that denial under §325(d) was inappropriate because neither Berner nor Ginani was previously presented to or considered by the Patent Office during prosecution. It was argued that Berner was not cumulative to the art of record because it disclosed the critical "non-flat focal surface" feature that the Examiner had found missing during prosecution, making it materially different and warranting consideration.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4 and 6-7 of Patent 9,675,430 as unpatentable.