3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2020-01644
• Patent #: 10,507,089
• Filed: September 22, 2020
• Petitioner(s): 3Shape A/S and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 9-12, 14-18, 20-21, and 32

2. Patent Overview

• Title: Imaging Apparatus for Intraoral Scans
• Brief Description: The ’089 patent describes an intraoral imaging apparatus that adjusts depth data to compensate for optical distortions. The system uses a movable lens to scan a three-dimensional object at different focal depths and includes a processor that applies compensation models to correct for distortions arising from a non-flat focal surface or changes in magnification.

3. Grounds for Unpatentability

Ground 1: Claims 9-12, 14-18, 20-21, and 32 are obvious over Berner in view of Ginani and Billiot.

• Prior Art Relied Upon: Berner (Application # 2010/0085636), Ginani (a 2013 publication on optical scanning systems), and Billiot (a 2013 journal article on 3D image acquisition).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Berner, the primary reference, discloses the core components of the claimed invention, including an optical system for a confocal microscope suitable for intraoral scanning. Berner’s system uses a movable lens to change the focusing setting, which displaces a non-flat (curved) focal surface, and teaches that resulting image distortions can be corrected by a computer using compensation models like polynomials. Petitioner contended that Ginani supplements Berner by providing well-understood details of confocal systems, such as using a microlens array to function as the claimed “illumination module” for generating a pattern of light. Finally, Petitioner asserted that Billiot remedies deficiencies in Berner by disclosing the use of a modern detector with a "plurality of pixels" (a CCD camera) and teaching specific software-based methods to compensate for magnification changes that occur in non-telecentric systems like Berner’s.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Berner with Ginani to implement Berner’s conceptual “illumination pattern” with a known, practical component (Ginani’s microlens array) that was advantageous for scanning large, immovable objects like teeth. A POSITA would have been further motivated to incorporate Billiot to solve the known image distortion and magnification problems inherent in Berner’s non-telecentric optical system. Billiot provided known software solutions for magnification correction and disclosed using a multi-pixel CCD detector, which was a well-known and superior component for capturing the detailed image data necessary for 3D reconstruction.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success in making this combination. The proposed modifications involved applying known solutions (microlens arrays, CCD detectors, software-based distortion correction) to address well-understood problems in confocal imaging (creating illumination patterns, correcting for non-telecentric distortions). The predictable nature of optics and the fact that Berner itself contemplated the compatibility of its system with similar advanced components would have provided a strong expectation that the combined system would function as intended.

4. Key Claim Construction Positions

• "a translation mechanism..." (Claims 9 and 32): Petitioner argued this term is a means-plus-function limitation under 35 U.S.C. §112(f). The recited function is "to adjust a location of at least one lens... to displace the focal surface," and the corresponding structure disclosed in the ’089 patent is "motor 72" and its equivalents.
• "illumination module..." (Claim 18): Petitioner argued this term also invokes §112(f), with the function being "to generate a pattern of light in an x-y plane." The corresponding structures identified in the specification include a grating, a micro lens array, an optics expander, and their equivalents.
• "adjust the depth data..." (Claims 9 and 32): Petitioner contended that "surface scan data" comprises the raw image intensity data, from which "depth data" (z-axis information) is derived. Therefore, the claimed step of "adjusting the depth data" refers to the computational correction of this z-axis information to compensate for optical distortions prior to generating the final 3D model.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under the Fintiv factors was unwarranted. It asserted that the parallel Delaware litigation was in its early stages with no substantive orders on validity issued, significant discovery remained, and a stay of the litigation would be requested if the inter partes review (IPR) was instituted. Petitioner also contended that the merits of the petition were exceptionally strong, particularly because the prior art addressed the exact limitations the patent examiner had relied upon for allowance.
• Petitioner further argued against denial under §325(d), stating that the primary reference, Berner, was never substantively considered by the PTO. Although Berner was cited in an Information Disclosure Statement (IDS), the examiner never applied it in a rejection or discussed its teachings, despite it disclosing the key data adjustment features that the examiner found missing from the other art of record.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 9-12, 14-18, 20-21, and 32 of Patent 10,507,089 as unpatentable.