3Shape AS v. Align Technology Inc

1. Case Identification

• Case #: IPR2021-01383
• Patent #: 10,728,519
• Filed: August 20, 2021
• Petitioner(s): 3Shape As and 3Shape Inc.
• Patent Owner(s): Align Technology, Inc.
• Challenged Claims: 1, 3-4, 6, 13, 15-17, 20-21, 23-24, 26-27, 30-34

2. Patent Overview

• Title: System for Determining Surface Topology and Associated Color
• Brief Description: The ’519 patent describes systems and methods for determining the surface topology and color of a three-dimensional object, particularly dental structures. The technology involves using a scanning system to obtain 3D depth data, a separate imaging system to obtain 2D color data, and a processor to associate the two datasets to create a color 3D model.

3. Grounds for Unpatentability

Ground 1: Obviousness over Babayoff and Okamoto - Claims 1, 3-4, 6, 13, 15-17, 23-24, 26-27, 30-31 are obvious over Babayoff in view of Okamoto.

• Prior Art Relied Upon: Babayoff (WO 00/08415) and Okamoto (JP Application Publication # 2001-82935).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Babayoff disclosed the core elements of the challenged claims, including a hand-held device with a confocal scanning system for determining 3D surface topology (depth data) of teeth. However, Babayoff's system is monochromatic and does not capture color information. Petitioner asserted that Okamoto remedied this deficiency by teaching a system that explicitly combines a confocal optical system for 3D measurements with a non-confocal optical system (e.g., white light source and color CCD) for capturing 2D color images. Okamoto further disclosed a processor that associates the separately acquired depth and color data to create a color 3D model. The combination of Babayoff’s hand-held scanner with Okamoto’s color imaging and data association capabilities was alleged to meet all limitations of the independent claims.
  • Motivation to Combine: A POSITA would combine these references to improve the functionality of Babayoff’s dental scanner. The petition contended that determining tooth color is critical for creating well-matched dental prosthetics, a known desirability in the art. Okamoto provided a known, advantageous method for adding this essential color-capture capability to a 3D scanner like Babayoff’s to provide an accurate color representation of the scanned dental structure.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references. The petition argued that Okamoto disclosed a 3D measurement device that already obtained and associated color information with depth data, which could be readily deployed in Babayoff’s similar confocal scanning system. The combination involved only the use of known methods and complementary technologies.

Ground 2: Obviousness over Babayoff, Okamoto, and Franetzki - Claims 20, 21, 32-34 are obvious over Babayoff in view of Okamoto and Franetzki.

• Prior Art Relied Upon: Babayoff (WO 00/08415), Okamoto (JP Application Publication # 2001-82935), and Franetzki (EP 0 837 659 B1).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Babayoff and Okamoto, adding Franetzki to address dependent claims reciting specific color capture techniques. Petitioner asserted that claims 20, 21, and 32-34 require features like a color illumination system with light beams of different wavelengths. Franetzki was cited as expressly teaching how to modify a monochrome 3D measuring camera (like Babayoff's) to record color images. The two methods taught by Franetzki—using a white light source and color CCD, or using sequential red/green/blue illuminations with a monochrome CCD—were argued to directly teach the claimed multi-wavelength illumination systems.
  • Motivation to Combine: Franetzki provided a strong motivation by expressly teaching the modification of 3D scanners to add color imaging for "image interpretation and restoration." A POSITA would have been motivated to incorporate Franetzki’s specific and advantageous sequential illumination technique into the Babayoff/Okamoto system to achieve higher resolution compared to a standard color CCD, as taught by Franetzki.
  • Expectation of Success: Petitioner argued there was a high expectation of success because Franetzki provided an explicit roadmap for modifying a monochrome 3D camera to record color. This modification would involve routine implementation, such as adding laser diodes of different wavelengths to Babayoff's illumination unit, a task well within the skill of a POSITA.

4. Key Claim Construction Positions

• The petition argued that several claim terms require construction, adopting positions from a parallel district court litigation. A central dispute involved the relationship between the depth data and color data.
• "scanning system configured to provide depth data" / "imaging system configured to provide...color image data": Petitioner proposed constructions clarifying that the depth data and color data are obtained independently of each other. This construction was based on the patent’s description of separate systems and was argued to be critical, as prior art like Okamoto explicitly taught separate, independent acquisition of the two data sets. Patent Owner proposed the plain and ordinary meaning for these terms.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) (based on Fintiv) and §325(d) would be inappropriate.
• §314(a) / Fintiv Factors: Petitioner asserted that the parallel district court litigation was in its very early stages, with no trial date set, favoring institution. Petitioner also noted it would stipulate not to pursue the same invalidity grounds in the district court if the IPR is instituted. Furthermore, the petition challenged nineteen claims, whereas only ten were asserted in the litigation, demonstrating significant non-overlap.
• §325(d) Factors: Petitioner argued that the grounds presented were not the same or substantially the same as those considered during prosecution. The Examiner rejected claims over Babayoff in view of Decker. Petitioner contended that Okamoto is materially different from Decker because Okamoto teaches separate capture of depth and color data, whereas Decker was characterized by the Examiner as acquiring all data in a "single snapshot." This material difference, which overcomes the Examiner's reason for allowance, demonstrates that the USPTO never considered the superior combination presented in the petition.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3-4, 6, 13, 15-17, 20-21, 23-24, 26-27, and 30-34 of the ’519 patent as unpatentable.