Align Technology Inc v. 3Shape AS

1. Case Identification

• Case #: IPR2021-01309
• Patent #: 10,383,711
• Filed: July 23, 2021
• Petitioner(s): Align Technology, Inc.
• Patent Owner(s): 3Shape A/S
• Challenged Claims: 1, 4-8, 43, and 45-46

2. Patent Overview

• Title: Focus Scanning Apparatus Recording Color
• Brief Description: The ’711 patent discloses a scanner system for recording the three-dimensional (3D) surface geometry and surface color of an object. The system uses a single color image sensor and a multichromatic light source to capture a series of 2D images at different focus plane positions to derive the 3D data.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fisker - Claims 1, 4-6, 8, 43, and 45-46 are obvious over Fisker.

• Prior Art Relied Upon: Fisker (Application # 2012/0092461).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fisker teaches a focus-scanning system capable of recording both surface geometry and color. Although one embodiment in Fisker uses sequential monochromatic lights, Fisker also explicitly teaches an alternative configuration using a multichromatic light source (e.g., white light) and a color image sensor with a color filter array (e.g., a Bayer filter). Petitioner contended that Fisker further suggests deriving geometry information from data limited to one color to reduce processing load, while deriving color information from all available colors. This directly maps to claim 1’s requirement of using a “first set” of image sensor pixels for geometry and a different “second set” for color, where the color is obtained via demosaicing—a well-known process for combining color data from a filter array.
  • Motivation to Combine: Not applicable (single reference). The motivation was to implement Fisker's own suggested alternative. A POSITA would combine Fisker's teachings to create a more efficient system that could capture color data from a single 2D image rather than multiple sequential images, thereby reducing scan time and complexity. Using a subset of pixels for geometry calculation, as suggested by Fisker, would predictably decrease data processing requirements.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because all components and methods described, including multichromatic LEDs, Bayer filter arrays, and demosaicing algorithms, were conventional and their use in 3D imaging systems was well-understood and predictable.

Ground 2: Obviousness over Colonna de Lega and Min - Claims 1 and 7 are obvious over Colonna de Lega in view of Min.

• Prior Art Relied Upon: Colonna de Lega (WO 2013/105922) and Min (Application # 2011/0085063).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Colonna de Lega discloses a scanner system for recording surface geometry and color using a broadband light source and a color image sensor with a Bayer filter, thus teaching most limitations of claim 1. However, Colonna de Lega does not explicitly teach using different sets of pixels for geometry and color. Min remedies this by disclosing a color image sensor with a specialized filter array containing separate sets of filters: one for color (red, green, blue) and one for depth information (white). Min explicitly teaches using the signals from the white filters for depth and the signals from the color filters, processed with a demosaic algorithm, for color.
  • Motivation to Combine: A POSITA would combine Min's specialized sensor design with Colonna de Lega's scanner system to enable simultaneous 3D geometry and color data acquisition from a single captured image. This combination would provide a complete data set for each pixel (both color and depth), improve signal-to-noise ratio for more accurate depth information, and avoid the need for complex, specialized demosaicing algorithms, as taught by Min.
  • Expectation of Success: Petitioner argued for a high expectation of success. The principles of color imaging and the components were conventional. A POSITA would have understood that incorporating Min's filter array into a system like Colonna de Lega’s would predictably allow for the capture of both geometry and color data with known benefits.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Colonna de Lega and Min with Acharya (Patent 7,274,393) to show motivation for making the geometry pixel set smaller than the color pixel set (claim 4), and combining Colonna de Lega and Min with Fisker to address other dependent claims (5, 6, 45, 46).

4. Key Claim Construction Positions

• "multichromatic probe light for illumination of the object" (claim 1): The parties disputed whether this requires "light having more than one color at the same time." Petitioner argued its grounds succeed under either party's proposed construction.
• Other Terms: For terms like "image pixels" and "data processing system," Petitioner adopted the Patent Owner's proposed constructions from related litigation for the purpose of the petition to demonstrate unpatentability even under the owner's interpretations.

5. Arguments Regarding Discretionary Denial

• Discretionary Denial under §325(d): Petitioner argued denial is unwarranted because the petition presents materially different art and arguments than those before the Examiner. While the Examiner considered Fisker, Petitioner asserted the Examiner did not have the benefit of expert testimony highlighting key disclosures suggesting the use of different pixel sets and demosaicing. Furthermore, Min was never considered during prosecution, and Colonna de Lega was only applied against a parent patent with different claim limitations.
• Discretionary Denial under Fintiv: Petitioner argued against denial based on a parallel district court case, asserting the litigation was in its very early stages with no trial date set and minimal investment by the parties. Petitioner noted its diligence in filing the petition well before the one-year statutory bar and stated that Patent Owner itself had argued against Fintiv denial under similar circumstances in related litigation.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 4-8, 43, and 45-46 of the ’711 patent as unpatentable.