3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2020-01643
• Patent #: 10,507,088
• Filed: September 22, 2020
• Petitioner(s): 3Shape As and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1-5, 7, 9, 19-24, and 26

2. Patent Overview

• Title: Imaging Apparatus for Performing Intraoral Scans
• Brief Description: The ’088 patent relates to an imaging apparatus for performing intraoral scans. The technology features an optical system with a non-flat focal surface and a translation mechanism that adjusts the location of at least one lens to change the focusing setting and compensate for distortions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Berner in view of Ginani - Claims 1-5, 7, 9, 19-24, and 26 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, 2013).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Berner, which discloses an optical system for a confocal microscope suitable for intraoral scanning, teaches most of the claimed limitations. Berner’s system includes a plurality of lenses, a non-flat (curved) focal surface, and a mechanism to translate a lens to adjust focus, which displaces the focal surface. Berner explicitly recognizes that its non-telecentric system creates distortions, including magnification variations, and teaches using computer-based compensation models to correct for them. Petitioner contended that Berner discloses the core limitations of independent claims 1 and 19 concerning adjustment to compensate for the non-flat focal surface and associated magnifications.
  • Petitioner asserted that Ginani, a dissertation on confocal scanning systems, supplies details not explicitly described in Berner but which would have been well understood by a person of ordinary skill in the art (POSITA). Specifically, Ginani was used to teach using a detector to measure light intensities and to provide a known structure—a microlens array—to implement Berner’s “illumination pattern” as the claimed “illumination module configured to generate an array of light.”
  • Motivation to Combine (for §103 grounds): Petitioner asserted multiple motivations for a POSITA to combine the references. The primary motivation was to supplement Berner’s confocal imaging system with well-known components and operational details provided by Ginani. Petitioner argued that using a microlens array (from Ginani) to create a pattern of illumination beams was a known, advantageous technique for parallel confocal scanning, which would have been an obvious modification to Berner's system to facilitate scanning of difficult-to-move objects like oral cavities. Both references share the common objective of creating a compact scanning device, making their teachings compatible and combinable.
  • Expectation of Success (for §103 grounds): Petitioner argued a POSITA would have had a reasonable expectation of success because both Berner and Ginani disclose complete confocal systems for obtaining surface topology. Incorporating Ginani's microlens array into Berner’s system was presented as a routine integration of a known component to achieve a predictable improvement in object field coverage. Berner itself contemplated using its system with scanners comprising microlens arrays, confirming the compatibility of the technologies.

4. Key Claim Construction Positions

• "a translation mechanism..." (Claims 1 and 19): Petitioner argued this phrase invokes 35 U.S.C. §112(f) as a means-plus-function term. The asserted function is adjusting a lens location to displace the focal surface, and the corresponding structure disclosed in the '088 Patent is a motor (motor 72).
• "an illumination module configured to generate an array of light..." (Claims 5 and 23): Petitioner also argued this phrase is a means-plus-function term under §112(f). The function is "to generate an array of light beams arranged in an X-Y Cartesian plane, that propagate along a Z axis." The corresponding structure identified in the ’088 patent includes a grating or microlens array. This construction was central to the argument for combining Berner with Ginani.
• "confocal imaging apparatus" (Claim 23): Petitioner proposed this term means "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 patent’s disclosure and the understanding of a POSITA, as supported by Ginani.

5. Arguments Regarding Discretionary Denial

• Discretionary Denial under Fintiv: Petitioner argued that discretionary denial based on the parallel Delaware Litigation would be inappropriate. Petitioner contended that the Fintiv factors weighed against denial because: (1) it anticipated requesting a stay of the litigation pending the inter partes review (IPR); (2) the trial date in the litigation had been postponed and was uncertain, making an overlap with the IPR Final Written Decision (FWD) unlikely; (3) the litigation was in its early stages, with no substantive orders on validity yet issued; and (4) the petition presented a strong case on the merits.
• Discretionary Denial under §325(d): Petitioner argued that denial under §325(d) was unwarranted. Although the Berner reference was cited in an Information Disclosure Statement (IDS) during prosecution, Petitioner asserted that the Examiner never substantively discussed or applied it. Petitioner argued that Berner discloses the very adjustment limitations the Examiner found missing from other prior art, and therefore the Examiner’s failure to apply Berner constituted a material error that warrants institution of the IPR.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-5, 7, 9, 19-24, and 26 of Patent 10,507,088 as unpatentable.