Align Technology Inc v. 3Shape AS

1. Case Identification

• Case #: IPR2021-01474
• Patent #: 10,097,815
• Filed: September 3, 2021
• Petitioner(s): Align Technology, Inc.
• Patent Owner(s): 3Shape A/S
• Challenged Claims: 1, 4-5, 7-10, 12-14, 17, 20-22, 24, 26-30, 34-36, 38-39, 44-45

2. Patent Overview

• Title: Scanner for Determining the 3D Geometry of an Object
• Brief Description: The ’815 patent discloses a scanner for optical 3D scanning of surfaces, such as for intraoral use. The scanner comprises a camera, a light source, an optical system with a movable focus element, and built-in motion sensors configured to yield data for remotely controlling a displayed image or for stitching partial scans together.

3. Grounds for Unpatentability

Ground 1: Obviousness over Noguchi and Gandyra - Claims 1, 4-5, 7-10, 12, 17, 24, 27-30, 34, 39, and 45 are obvious over Noguchi in view of Gandyra.

• Prior Art Relied Upon: Noguchi (Japanese Patent No. 3321866) and Gandyra (Application # 2009/0087050).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Noguchi, which discloses a handheld 3D surface shape detection device for applications like mapping dental cavities, teaches the core elements of independent claim 1. This includes a scanner with a camera, a light source, an optical system, a focus element (objective lens 501), and a translation stage (objective lens drive system 509) for adjusting the focus element's position. Petitioner asserted that Gandyra, which discloses a 3D intraoral scanner, supplies the missing limitation of claim 1: "one or more built-in motion sensors" (e.g., acceleration sensors) configured to yield data for "stitching or registering partial scans to each other."
  • Motivation to Combine: A POSITA would combine these references because both relate to 3D imaging technology, specifically for dental applications. Petitioner contended a POSITA would have been motivated to enhance Noguchi's compact handheld scanner with the known motion sensor technology from Gandyra to improve the ease and accuracy of scanning hard-to-reach areas, such as dental cavities, by enabling the combination of multiple partial scans.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in integrating Gandyra’s motion sensors into Noguchi’s scanner, as it involved the application of known techniques to achieve predictable results in a handheld device.

Ground 2: Obviousness over Noguchi, Gandyra, and Marvit - Claims 35-36, 38, and 44 are obvious over Noguchi and Gandyra in view of Marvit.

• Prior Art Relied Upon: Noguchi (Japanese Patent No. 3321866), Gandyra (Application # 2009/0087050), and Marvit (Application # 2005/0212756).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Noguchi-Gandyra combination, which provided a handheld scanner with motion sensors. Petitioner argued that Marvit teaches the additional limitations of claims 35, 36, 38, and 44, which require motion sensors configured for "remotely controlling an orientation," "rotation or panning," or "controlling an image" displayed on a display. Marvit explicitly disclosed a handheld device with a motion detector (accelerometers and gyros) that recognizes translation and rotation to manipulate a view on a display, serving as a gesture-based input.
  • Motivation to Combine: A POSITA would combine Marvit with the Noguchi-Gandyra scanner to enhance its functionality and user interface. Providing a visual output of the scan and allowing the user to manipulate the displayed image via gestures would offer intuitive feedback, guiding the user to complete the 3D scan more efficiently and accurately. This was a known benefit in the art of intraoral scanners.
  • Expectation of Success: Success would be expected, as the principles of using motion sensors for gesture-based user interface control were well-understood and their incorporation into the combined Noguchi-Gandyra scanner would be a straightforward application of known features.

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

• Prior Art Relied Upon: Noguchi (Japanese Patent No. 3321866), Gandyra (Application # 2009/0087050), and Hayashi (Japanese Patent No. 62100716).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the Noguchi-Gandyra combination teaches a handheld scanner with a moving focus element (the translation stage from Noguchi). This ground addressed claims 13 and 14, which recite a "means for fixing and/or maintaining a center of mass" and a "counter-weight," respectively. Hayashi was asserted to teach these elements, as it disclosed a camera with a movable focusing lens and a corresponding counter-weight that moves in the opposite direction to correct for shifts in the lens barrel's centroid, thereby maintaining stability.
  • Motivation to Combine: A POSITA would be motivated to add Hayashi’s counter-weight system to the Noguchi-Gandyra scanner to solve the known center-of-gravity problem created by Noguchi's moving focus element. An oscillating centroid in a handheld device would create an unstable handpiece and could negatively impact the accuracy of Gandyra’s motion sensors, leading to false motion data. Hayashi provided a known solution to this problem.
  • Expectation of Success: The principles of weight-balancing in optical systems were well-understood. A POSITA would have a high expectation of success in implementing Hayashi's established mechanical solution to improve the stability of the Noguchi-Gandyra scanner.
• Additional Grounds: Petitioner asserted numerous additional obviousness challenges based on other combinations of prior art, including Kurtz (for polarization optics), Knighton (as an alternative to Gandyra for motion sensing and user feedback), and Serra (for user interface and image manipulation features).

4. Key Claim Construction Positions

• Petitioner argued that two terms in claim 13 are means-plus-function limitations:
  • "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 is "a counter-weight" and its equivalents.
  • "The 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 §325(d) was improper because the petition presented prior art references (Noguchi, Gandyra, Marvit, Hayashi, etc.) that were not previously applied or cited during prosecution of the ’815 patent.
• Petitioner also argued against discretionary denial under §314(a) based on the Fintiv factors. Key arguments included: the parallel district court litigation was in its early stages with a trial date over a year away; there was no stay, but one would likely be sought upon institution; and Petitioner stipulated not to pursue in the district court any ground on which IPR is instituted, eliminating concerns of overlapping issues and preserving judicial resources.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 4-5, 7-10, 12-14, 17, 20-22, 24, 26-30, 34-36, 38-39, and 44-45 of the ’815 patent as unpatentable.