3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2021-01323
• Patent #: 10,750,152
• Filed: August 10, 2021
• Petitioner(s): 3Shape A/S and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1-4, 7, 9-11, 14, 16-20, and 23-27

2. Patent Overview

• Title: Systems and Methods for Determining Surface Topology and Associated Color of an Intraoral Structure
• Brief Description: The ’152 patent discloses systems and methods for generating a three-dimensional (3D) color model of an intraoral structure, such as teeth. The technology involves capturing 3D surface topology data and 2D color data and then mapping or associating the two data sets to create a combined color 3D numerical entity.

3. Grounds for Unpatentability

Ground 1: Obviousness over Babayoff, Franetzki, and Sachdeva - Claims 1-4, 7, 9-11, 14, 16-20, and 23-27 are obvious over Babayoff in view of Franetzki and Sachdeva.

• Prior Art Relied Upon: Babayoff (WO 00/08415), Franetzki (European Patent No. 0 837 659), and Sachdeva (Application # 2004/0197727).
• Core Argument for this Ground: Petitioner argued that the ’152 patent is an obvious combination of known prior art elements. The core 3D intraoral scanning system was taught by Babayoff, which described a confocal imaging apparatus for determining surface topology. However, Babayoff’s system was monochromatic. Franetzki explicitly taught how to modify such monochromatic 3D scanners to also capture color image data, either by using sequential colored illuminations with a monochrome sensor or by using a white light source with a color sensor. Finally, to the extent the combination of Babayoff and Franetzki did not explicitly describe the final data mapping, Sachdeva taught methods for mapping 2D color data onto 3D depth data to create a combined, color 3D model. Petitioner asserted that combining these known techniques would have been obvious to a person of ordinary skill in the art (POSITA) to achieve the predictable result of a color 3D intraoral scanner.
  • Prior Art Mapping: Petitioner contended that the combination of Babayoff and Franetzki taught the key limitations of the independent claims. For independent claim 1, Babayoff disclosed a hand-held imaging device with focusing optics that scan a focal plane over a range of depths, an illuminator, an image sensor (CCD), and a processor. The combination with Franetzki taught modifying Babayoff’s image sensor to capture color image data in addition to the depth data. Petitioner argued that the image data captured by this combined system would be used by the processor to generate both depth data (as in Babayoff) and color data (as taught by Franetzki). The final step of providing a 3D numerical entity based on both data sets was taught by Franetzki’s disclosure of superimposing or overlapping the color image with the 3D data, a process further detailed by Sachdeva’s mapping techniques.
  • Motivation to Combine: A POSITA would combine Babayoff with Franetzki to add the well-known benefit of color to Babayoff's established monochromatic 3D scanner, thereby improving the visualization of the scanned intraoral object. Franetzki provided an express motivation by teaching the modification of 3D measuring cameras to record color images for better interpretation and restoration. Furthermore, a POSITA would have preferred to add Franetzki's color capability to Babayoff’s scanner because Babayoff's method did not require the powder coating critiqued in other systems. A POSITA would have been motivated to incorporate Sachdeva to provide a more detailed description of how to map the color data onto the 3D topology data to create the final color 3D model.
  • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success. Franetzki provided express, detailed instructions on how to modify a monochrome 3D camera to record color, suggesting the modification would involve routine implementation. The combination of complementary teachings from Babayoff and Franetzki posed no significant technical risks and would have achieved the predictable benefits of an improved color 3D scanner.

4. Key Claim Construction Positions

• Petitioner argued that several claim terms were disputed in co-pending district court litigation and that its invalidity arguments held under any proposed construction. The central dispute concerned the relationship between "depth data" and "color data."
• "depth data" / "color data": Petitioner proposed constructions requiring these data sets to be obtained independently of each other (e.g., "depth data" is "3D surface points obtained independently of the color data"). This construction supports the invalidity argument that the prior art teaches combining independently captured 3D depth scans and 2D color images. The Patent Owner proposed a plain and ordinary meaning, which Petitioner contended was an attempt to read the claims more broadly.

5. Arguments Regarding Discretionary Denial

• Petitioner presented substantial arguments that discretionary denial under 35 U.S.C. §314(a) and §325(d) would be inappropriate.
• §314(a) (Fintiv Factors): Petitioner argued against denial based on the parallel WDTX Action, stating the district court case was in its early stages with no trial date set and minimal investment from the parties. Petitioner highlighted that six of the nineteen claims challenged in the IPR were not at issue in the district court case, demonstrating significant non-overlap. Further, Petitioner stipulated that if the IPR was instituted, it would not pursue the same ground in the district court litigation, which strongly favors institution.
• §325(d) (Same or Substantially the Same Art or Arguments): Petitioner argued this petition did not raise §325(d) concerns because the asserted prior art combination of Babayoff, Franetzki, and Sachdeva was never evaluated by the USPTO during prosecution. While the examiner rejected some claims over Babayoff in view of a reference called Decker, Petitioner contended that Franetzki is materially different from Decker. Specifically, Franetzki teaches the separate capture of color and depth data, which addresses the very deficiency the examiner identified in Decker (acquiring all data in a single snapshot) when allowing the claims. Therefore, the examiner never considered the specific, stronger combination presented in the petition.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 7, 9-11, 14, 16-20, and 23-27 of the ’152 patent as unpatentable.