3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2021-01241
• Patent #: 10,791,936
• Filed: July 26, 2021
• Petitioner(s): 3Shape A/S and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Scanning a Patient's Teeth for a Dental Procedure
• Brief Description: The ’936 patent discloses systems and methods for intraoral scanning to create a 3D digital model of a patient's teeth. The invention focuses on a workflow for updating the model by receiving user input to define a portion of the model to be removed, removing it, receiving a second scan of a physically changed portion of the intraoral cavity, and replacing the removed data with the second scan data.

3. Grounds for Unpatentability

Ground 1: Anticipation over Rubbert - Claims 1, 4-7, 9, and 11-13 are anticipated by Rubbert under 35 U.S.C. §102.

• Prior Art Relied Upon: Rubbert (International Publication No. WO 03/094102).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rubbert, which discloses a system for orthodontic treatment planning, teaches every element of the challenged claims. Rubbert's system creates a 3D model from an intraoral scan. To correct data obscured by orthodontic brackets, Rubbert's process involves deleting the flawed scan data (the "first scan data" from a monitoring scan with brackets) based on user input, creating a void. This void is then filled by registering scan data from a previous, unobstructed scan (the "second scan data" from an original scan without brackets). Petitioner contended that the addition or removal of a bracket constitutes the "physically changed portion" of the intraoral cavity, and that Rubbert’s process of deleting flawed data and replacing it with historical, clearer data meets all limitations of independent claims 1 and 9. Dependent claims were argued to be met by Rubbert's disclosure of registering, stitching, and discarding data during this replacement process.

Ground 2: Obviousness over Rubbert and Babayoff - Claims 2, 3, 18, and 19 are obvious over Rubbert in view of Babayoff under 35 U.S.C. §103.

• Prior Art Relied Upon: Rubbert (WO 03/094102) and Babayoff (WO 00/08415).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims reciting specific features of the hand-held scanner. Petitioner asserted that Rubbert provides the overall system for updating a dental model, as established in Ground 1. Babayoff was cited for its disclosure of a specific type of hand-held intraoral scanner that uses confocal focusing and includes the claimed elements: a probing member with a sensing face, an illumination unit, light focusing optics, and a translation mechanism. The ’936 patent itself incorporates Babayoff by reference for these very features.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Babayoff's scanner with Rubbert's system as a simple substitution of one known component for another to achieve a predictable result. Petitioner argued a POSITA would recognize that Babayoff’s confocal imaging is less susceptible to obstructions than the two-pathway scanner in Rubbert, providing a clear benefit and motivation for the combination.
  • Expectation of Success: A POSITA would have a high expectation of success, as both references describe intraoral scanners used for generating 3D scan data for dental modeling systems.

Ground 3: Obviousness over Rubbert and Rosenstiel - Claims 14-16 are obvious over Rubbert in view of Rosenstiel under §103.

• Prior Art Relied Upon: Rubbert (WO 03/094102) and Rosenstiel (a 1995 dental textbook, Contemporary Fixed Prosthodontics).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targeted claims adding limitations related to conventional dental procedures. Petitioner argued Rubbert provides the foundational 3D modeling system. Rosenstiel, a standard dental textbook, was introduced to show that the claimed dental procedures—such as preparing a tooth, ensuring a "finish line" is clear of obscuring materials like saliva, and analyzing the tooth preparation for a crown—were all well-known, routine practices for dentists. The claims merely recited the use of Rubbert’s system by a dentist performing these conventional tasks.
  • Motivation to Combine: A POSITA developing a dental modeling system like Rubbert's would be motivated to consult standard dental textbooks like Rosenstiel to understand the clinical context and ensure the system could support common dental workflows. The combination simply applies Rubbert's tool to the exact scenarios for which it was intended, as described by Rosenstiel.
  • Expectation of Success: A POSITA would have a high expectation of success because the combination does not change the operation of Rubbert's system but merely applies it as a tool for well-established, conventional dental analyses.

• Additional Grounds: Petitioner asserted an alternative obviousness challenge to claims 1, 4-13, 17, and 20 based on Rubbert alone, arguing that even if certain elements were not explicitly disclosed, they would have been obvious modifications, such as using a conventional user interface to define a region for removal or re-scanning after a physical change instead of using historical data.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv was unwarranted. The co-pending district court litigation was in its early stages, with no trial date set and discovery yet to begin. Petitioner stated it would file a motion to stay the litigation if the inter partes review (IPR) was instituted.
• There was significant non-overlap between the proceedings, as the IPR challenged all 20 claims of the ’936 patent, whereas only 7 claims were asserted in the district court.
• Petitioner further stipulated that if the IPR was instituted, it would not pursue invalidity arguments based on Rubbert or Rosenstiel in the district court, thus preventing duplicative efforts.
• Petitioner also contended that denial under §325(d) was inappropriate because, although Rubbert and Babayoff were cited in an Information Disclosure Statement, there was no evidence the Examiner substantively considered them during prosecution.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-20 of the ’936 patent as unpatentable.