3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2020-01645
• Patent #: 10,507,089
• Filed: September 22, 2020
• Petitioner(s): 3Shape A/S and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1-4, 6-8, 22-28, and 30

2. Patent Overview

• Title: Method and Apparatus for Intraoral Scanning
• Brief Description: The ’089 patent discloses methods and apparatus for generating a three-dimensional (3D) virtual model of an intraoral object. The system captures surface scan data while changing the position of at least one focusing lens, which causes changes in magnification and a non-flat focal surface, and then adjusts the resulting depth data using compensation models to correct for these distortions before generating the final 3D model.

3. Grounds for Unpatentability

Ground 1: Obviousness over Berner, Ginani, and Billiot - Claims 1-4, 6-8, 22-28, and 30 are obvious over Berner in view of Ginani and Billiot.

• Prior Art Relied Upon: Berner (Application # 2010/0085636), Ginani (a 2013 publication titled "Optical Scanning Sensor System with Submicron Resolution"), and Billiot (a 2013 journal article titled "3D Image Acquisition System Based on Shape from Focus Technique").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Berner discloses the core of the claimed invention, including an optical system for intraoral confocal scanning that uses a movable lens to change focusing settings. This movement displaces the focal surface, which Berner teaches is non-flat (curved or aspherical), causing magnification changes and distortions. Berner further teaches using a computer and mathematical models (e.g., a polynomial) to compensate for these distortions. Petitioner contended Ginani supplements Berner by providing well-known details of a confocal system, such as using a detector to measure light intensity to determine point positions and disclosing a microlens array to implement the "illumination module" recited in claim 27. Finally, Petitioner asserted that Billiot remedies deficiencies in Berner by explicitly teaching the use of a detector with a "plurality of pixels" (a CCD camera) and a software-based magnification compensation model (a transformation matrix) to correct for magnification distortions inherent in non-telecentric systems like Berner's.
  • Motivation to Combine: A POSITA would combine Berner and Ginani because both relate to compact confocal scanners, share common objectives, and disclose similar components. Adding Ginani's microlens array to Berner's scanner was presented as an "obvious to try" modification to improve performance for intraoral scanning. A POSITA would further modify this combination with Billiot to solve the known problem of magnification distortion in Berner’s non-telecentric system. Billiot was argued to disclose a known, software-based solution for this exact problem and to supply a specific, well-understood detector type (a multi-pixel CCD) that Berner only implicitly suggested.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success because combining the references involved applying known methods to familiar components to achieve predictable results. The modifications, such as adding a microlens array and a multi-pixel detector, were described as modest improvements to existing designs using well-established techniques common in the field of optical design.

4. Key Claim Construction Positions

• "adjusting the depth data" / "depth data": Petitioner argued that "surface scan data" refers to the raw light intensity data from a "z-stack" of scanned planes, while "depth data" is the z-axis distance information derived from that raw data by identifying the in-focus position for each pixel. Critically, Petitioner contended the claimed "adjusting" of this depth data occurs on the processed image information to correct for distortions before the final 3D model is generated.
• "translation mechanism" (Claim 22) and "illumination module" (Claim 27): Petitioner argued these terms, while not using the word "means," are means-plus-function limitations under 35 U.S.C. §112(f). For the "translation mechanism," the function is adjusting a lens location to displace the focal surface, with the corresponding structure being motor 72 from the patent's specification. For the "illumination module," the function is to generate an array of light beams, with the corresponding structure being a grating, micro-lens array, or optics expander.
• "confocal imaging apparatus" (Claim 28): Petitioner proposed this term 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 patent's disclosure and the understanding in the art.

5. Arguments Regarding Discretionary Denial

• Arguments against §314(a) Denial (Fintiv): Petitioner argued against discretionary denial based on the parallel Delaware Litigation. Key points included: (1) the district court case was in its early stages with significant discovery remaining; (2) the trial date was scheduled for well after the statutory deadline for a Final Written Decision in the IPR, minimizing overlap; (3) Petitioner stipulated that if the IPR is instituted, it would not pursue the same invalidity ground in the district court; and (4) the petition's merits were particularly strong because the asserted prior art allegedly discloses the very adjustment and compensation features that the patent examiner identified as missing from the art during prosecution.
• Arguments against §325(d) Denial: Petitioner contended that the asserted prior art combination was not the same as, or substantially the same as, art previously presented to the PTO. Although Berner was cited in an Information Disclosure Statement (IDS), the examiner never substantively discussed or applied it. Petitioner argued that Berner discloses the critical "adjustment limitations" the examiner found lacking in the prosecuted art, and therefore the examiner materially erred by failing to evaluate it.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 6-8, 22-28, and 30 of Patent 10,507,089 as unpatentable.