Align Technology Inc v. 3Shape AS

1. Case Identification

• Case #: IPR2021-01473
• Patent #: 10,097,815
• Filed: September 3, 2021
• Petitioner(s): Align Technology, Inc.
• Patent Owner(s): 3Shape A/S
• Challenged Claims: 1, 4, 7-14, 17, 20-22, 24, 26-30, 34-39, and 44-45

2. Patent Overview

• Title: Scanner for determining 3D geometry
• Brief Description: The ’815 patent discloses a scanner for optical 3D scanning of surfaces. The scanner comprises a camera, a light source, and an optical system with a focus element that can vary the focus plane, and may be integrated into a handheld housing with motion sensors for stitching partial scans or remotely controlling a display.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, 7-10, 12, 17, 20-21, 24, 27-30, 34, 37, 39, and 45 are obvious over Morgan in view of Gandyra.

• Prior Art Relied Upon: Morgan (Patent 5,381,236) and Gandyra (Application # 2009/0087050).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Morgan, a 3D imaging system for constructing a surface map of an object, taught the core elements of independent claim 1, including a camera (detector 1), a light source (lamp 5), an optical system (lens system 2, beam-splitter 8), a focus element (lens system 2), and a translation stage (positioning means 4). Morgan also disclosed building a 3D image from multiple 2D "slices," which Petitioner contended taught the "stitching or registering partial scans" limitation. Gandyra was cited to explicitly teach the use of built-in motion sensors (acceleration sensors) in a handheld 3D scanner to detect the scanner's location and orientation for accurately combining, or "registering," individual shots.
  • Motivation to Combine: Petitioner contended a POSITA would combine Morgan and Gandyra because both references are directed to 3D imaging technology, including for dental applications. A POSITA would have been motivated to enhance Morgan’s 3D scanner with the built-in motion sensors taught by Gandyra to achieve the known benefits of easier scanning in hard-to-reach areas (like the oral cavity) and increased 3D imaging accuracy, especially when mapping dental cavities as described in Morgan.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success, as integrating motion sensors into handheld scanners was a matter of routine engineering. Sizing Morgan’s scanner for a handheld housing and integrating Gandyra’s sensors would involve known techniques with predictable results, requiring only routine modifications to software to process the motion sensor data alongside the scan data.

Ground 2: Claims 1, 4, 7-10, 12, 17, 20-21, 24, 26-30, 34, 37, 39, and 45 are obvious over Morgan in view of Knighton.

• Prior Art Relied Upon: Morgan (Patent 5,381,236) and Knighton (Application # 2005/0237581).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative combination for the same claims challenged in Ground 1. As before, Morgan was alleged to teach the core optical scanner components. Knighton, like Gandyra, was cited as teaching a handheld scanner with built-in motion sensors (gyroscopes and accelerometers) that generate movement output data. This data is used to stitch partial scans together to generate a 3D representation of a target.
  • Motivation to Combine: The motivation was similar to Ground 1. Both Morgan and Knighton describe 3D scanners for mapping hard-to-reach areas. Knighton explicitly recognized the need for a small, handheld 3D scanner with motion sensors to detect movement and position. A POSITA would have been motivated to configure Morgan’s scanner as a handheld unit with Knighton's motion sensors to gain the benefits of ease-of-use and increased imaging accuracy that Knighton taught.
  • Expectation of Success: Petitioner argued success would be expected because integrating Morgan's optical components into a handheld housing with sensors, as taught by Knighton, was a routine application of known techniques. It would be obvious to configure Morgan's computer to receive and process the positional data from Knighton's sensors to improve the accuracy of the final 3D image.

Ground 3: Claims 13-14 are obvious over Morgan and Gandyra in view of Hayashi.

• Prior Art Relied Upon: Morgan (Patent 5,381,236), Gandyra (Application # 2009/0087050), and Hayashi (Japanese Patent No. 62100716).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination of Morgan and Gandyra from Ground 1 to address the specific limitations of claims 13 and 14, which require a "means for fixing and/or maintaining a center of mass" and a "counter-weight," respectively. Petitioner argued that Hayashi, which describes a camera with a moving focusing lens, explicitly addressed the resulting problem of a shifting center of gravity. Hayashi taught using a counter-weight that moves opposite to the focusing lens to maintain a stable centroid.
  • Motivation to Combine: A POSITA, having combined Morgan and Gandyra to create a handheld scanner, would recognize that the movement of Morgan's focus element (via the translation stage) would create a shifting center of mass. This would result in an unstable handpiece and could introduce false data from the motion sensors. A POSITA would have looked to solutions in the analogous art of handheld image capture devices and found Hayashi, which taught a counter-weight system to solve this exact problem, thereby improving stability and sensor accuracy.
  • Expectation of Success: Petitioner contended that incorporating Hayashi's well-understood, mechanical weight-balancing system into the Morgan-Gandyra scanner would have been straightforward and predictable. The principles were well-known in the optics industry, and a POSITA could implement the system using routine steps.

• Additional Grounds: Petitioner asserted numerous additional obviousness grounds, including combinations of Morgan, Gandyra, and Marvit (for gesture-based image control); Morgan, Gandyra, and Kurtz (for adding polarizing optics); and combinations using Serra as an alternative reference for remote display control.

4. Key Claim Construction Positions

• Petitioner argued that two terms in claim 13 should be construed as means-plus-function limitations under §112.
• “Means for fixing and/or maintaining a center of mass of the focus element adjustment means”: Petitioner proposed the function is “fixing and/or maintaining a center of mass” and the corresponding structure disclosed in the ’815 patent specification is “a counter-weight” and its equivalents.
• “[T]he focus element adjustment means”: Petitioner proposed the function is “adjusting a focus element” and the corresponding structure is the “translation stage” recited in claim 1 and its equivalents.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors was inappropriate. Petitioner asserted that the parallel district court litigation was in its early stages, with limited investment by the court and parties, as discovery was ongoing and no substantive decisions beyond a preliminary claim construction ruling had been issued. Petitioner further stipulated that it would not pursue in the district court any invalidity ground that is instituted in the IPR, thereby eliminating any significant overlap between the proceedings. Petitioner also noted that the district court trial date was over a year away and subject to potential delay, while the Board remained fully operational.

6. Relief Requested

• Petitioner requests institution of IPR and a final written decision finding claims 1, 4, 7-14, 17, 20-22, 24, 26-30, 34-39, and 44-45 unpatentable as obvious under 35 U.S.C. §103.