3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2021-01120
• Patent #: 10,750,151
• Filed: June 24, 2021
• Petitioner(s): 3Shape A/S and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1, 4, 10, 11, 13, 18, 19, 25, and 30

2. Patent Overview

• Title: Method and System for Determining Surface Topology and Color of Intraoral Structures
• Brief Description: The ’151 patent discloses methods and systems for generating a color three-dimensional model of an intraoral structure, such as teeth. The technology involves capturing 3D surface topology data using a scanning system (e.g., confocal imaging) and 2D color data using an imaging system, and then mapping the color data onto the 3D topology data to create a combined digital model.

3. Grounds for Unpatentability

Ground 1: Obviousness over Babayoff in view of Atiya - Claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 are obvious over Babayoff in view of Atiya.

• Prior Art Relied Upon: Babayoff (Patent 7,319,529) and Atiya (Application # 2018/0192877).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Babayoff taught all elements of the challenged claims except for capturing depth image data using white light illumination. Babayoff, which shares a specification with the ’151 patent, disclosed a confocal scanning system for intraoral use that captured depth data using monochromatic light and separately captured color data using either sequential colored illuminations or a white light source with a color image sensor. Petitioner asserted that Atiya remedied this deficiency. Atiya disclosed a compact, handheld confocal 3D scanning apparatus that expressly taught using a white LED light source as a confocal illuminator to generate and capture three-dimensional depth data. Petitioner contended that combining Atiya’s white-light depth capture method with Babayoff’s system for mapping color and depth data rendered the challenged claims obvious.
  • Motivation to Combine (for §103 grounds): Petitioner presented several motivations for a person of ordinary skill in the art (POSITA) to combine the references. A POSITA would combine Atiya with Babayoff to achieve a more compact, lighter, and lower-cost intraoral scanner, as Atiya was directed to improving upon conventional scanners like Babayoff. Furthermore, Babayoff’s stated goal was to improve the accuracy of mapping 2D color data to 3D depth data by capturing both from the same angle; using Atiya's white light system to capture both data types would be a known way to further this goal and improve data registration.
  • Expectation of Success (for §103 grounds): Petitioner asserted that a POSITA would have a reasonable expectation of success in combining the teachings. The references were in the same technical field of intraoral 3D scanning, addressed similar problems, and were complementary. Incorporating a white light source for depth capture, as taught by Atiya, into the system of Babayoff was argued to be a straightforward modification for a POSITA.

4. Key Technical Contentions (Beyond Claim Construction)

• Petitioner’s primary technical contention was that the ’151 patent was not entitled to its claimed priority date, which dated back to provisional applications filed in 2004. Petitioner argued that the independent claims all required capturing depth image data from an intraoral structure illuminated with white light.
• Petitioner asserted that the ’151 patent’s parent applications (the "Ancestral Applications") failed to provide written descriptive support for this limitation, as required by 35 U.S.C. §112. The parent specifications allegedly taught that depth data was obtained using monochromatic illumination (e.g., a laser) or, in one embodiment, from white light that was passed through a color filter to provide sequential colored illuminations.
• Consequently, Petitioner argued that the ’151 patent’s effective filing date was its actual filing date of February 14, 2020. This later filing date made both Babayoff (published 2008) and Atiya (published 2018) available as prior art under §102.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors was unwarranted. It was contended that the parallel district court litigation (the "WDTX Action") was in its very early stages, with fact discovery not yet commenced and no trial date set. Petitioner noted the long median time-to-trial in the district and stated its intent to move for a stay pending the outcome of the inter partes review (IPR).
• To further weigh against denial, Petitioner stipulated that if the IPR was instituted, it would not pursue the same ground of invalidity in the district court litigation, thus avoiding duplicative efforts.
• Petitioner also argued that denial under §325(d) was inappropriate because the petition raised new grounds and relied on prior art references (specifically Atiya) that were not considered during the original prosecution of the ’151 patent.

6. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 of Patent 10,750,151 as unpatentable.