Align Technology Inc v. 3Shape AS

1. Case Identification

• Case #: IPR2021-01475
• Patent #: 10,097,815
• Filed: September 3, 2021
• Petitioner(s): Align Technology, Inc.
• Patent Owner(s): 3Shape A/S
• Challenged Claims: 1-3, 27, 31-33, and 40-43

2. Patent Overview

• Title: Optical 3D Scanning
• Brief Description: The ’815 patent discloses a scanner for determining the 3D geometry of an object's surface. The system comprises a camera, a light source projecting a spatial pattern, an optical system with a movable focus element, and built-in motion sensors used for remotely controlling a displayed image or for stitching partial scans.

3. Grounds for Unpatentability

Ground 1: Obviousness over Babayoff and Stern - Claim 33 is obvious over Babayoff in view of Stern.

• Prior Art Relied Upon: Babayoff (Patent 6,697,164) and Stern (Patent 4,629,324).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Babayoff discloses a handheld confocal 3D imaging system that meets most limitations of claim 33, including a scanner with a camera, a light source projecting a pattern, an optical system, a movable focus element (confocal optics 42), and a translation stage (motor 72). However, Petitioner asserted that the final limitation—a processor configured to generate a "correlation measure"—is taught by Stern. Stern discloses a 3D imaging system that processes images by determining the location that "maximally correlates with a reference pattern." Specifically, Stern’s processor generates a correlation measure (product 44) by multiplying a reference signal (representing the projected pattern) with an input signal (representing the reflected light) to find the in-focus position.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references because they are in the same field of 3D scanner technology and address the common problem of accurately scanning surfaces with insufficient detail. A POSITA would be motivated to integrate Stern’s correlation-based image processing into Babayoff’s scanner to improve its accuracy and sensitivity, which would be a simple modification of Babayoff’s software.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the operating principles of both confocal scanning (Babayoff) and correlation-based processing (Stern) were well-understood and predictable.

Ground 2: Obviousness over Babayoff and Serra - Claims 1 and 27 are obvious over Babayoff in view of Serra.

• Prior Art Relied Upon: Babayoff (Patent 6,697,164) and Serra (Application # 2006/0020204).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Babayoff teaches the core scanning elements of claim 1, including the camera, light source, optical system, and movable focus element. The key limitation at issue is the "one or more built-in motion sensors" configured for "remotely controlling an image displayed on a display." Petitioner argued this is taught by Serra, which discloses a handheld scanning probe with a 3D tracking system (motion sensor). Serra explicitly teaches using the tracking information from the probe’s movement to manipulate the scanned 3D image on a monitor, such as to "rotate the entire virtual scene."
  • Motivation to Combine: A POSITA would combine the references to enhance the functionality and ergonomics of Babayoff's handheld scanner. While Babayoff used a keyboard for image manipulation, Serra taught the ergonomic benefit of manipulating the image directly via scanner movement. Petitioner argued a POSITA would find it obvious to integrate Serra's more intuitive motion-based control into Babayoff’s handheld device, especially since the benefits of such controls for intraoral scanners were well-known.
  • Expectation of Success: Success would be expected because the technologies were well-understood. Utilizing motion sensor data to recognize gestures and control a display was conventional, and incorporating Serra's 3D user interface into Babayoff's device would be a straightforward integration of known features.

Ground 3: Obviousness over Babayoff, Stern, Serra, and Gandyra - Claim 43 is obvious over Babayoff, Stern, and Serra in view of Gandyra.

• Prior Art Relied Upon: Babayoff (Patent 6,697,164), Stern (Patent 4,629,324), Serra (Application # 2006/0020204), and Gandyra (Application # 2009/0087050).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the previous combinations. The combination of Babayoff, Stern, and Serra allegedly teaches a handheld 3D scanner with correlation-based processing and motion sensors for remotely controlling a display. Claim 43, a dependent claim, adds the limitation that the motion sensors are configured for "stitching or registering partial scans to each other." Petitioner argued this feature is explicitly taught by Gandyra. Gandyra discloses a 3D intraoral scanner with motion sensors (acceleration sensors) that detect the scanner's movement. This motion data is used to "combine the individual shots" in a procedure "referred to as 'registering' or 'matching'" to form one total object representation.
  • Motivation to Combine: The motivation was to improve the accuracy and completeness of 3D intraoral scans. A POSITA using the combined Babayoff-Stern-Serra scanner would recognize the need to accurately combine multiple scans to form a complete 3D model. Gandyra provided a known solution for this exact problem by using motion sensor data to register partial scans.
  • Expectation of Success: A POSITA would have an expectation of success because integrating Gandyra’s motion-based registration was a matter of routine engineering. It would involve configuring the processor of the Babayoff-Stern-Serra device to use the existing motion sensor data for stitching, a well-understood and predictable software modification.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claim 33 over Babayoff alone (Ground 1); claims 2-3 and 31-32 over Babayoff, Serra, and Stern (Ground 4); and claims 40-42 over Babayoff, Stern, and Serra (Ground 5). These grounds relied on similar mapping and motivation arguments based on the core prior art references.

4. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially Same Art or Arguments: Petitioner argued against discretionary denial under §325(d), asserting that the Office materially erred during prosecution and that new arguments are being presented. Although the Examiner applied Babayoff, Petitioner contended the Examiner never applied it against the combination of features in issued claim 33 and overlooked its teachings regarding the "correlation measure" element. Furthermore, Stern and Serra were only nominally cited in an Information Disclosure Statement (IDS) and were never substantively applied, while Gandyra was never before the Examiner.
• §314(a) - Fintiv Factors: Petitioner argued that the Fintiv factors weigh in favor of institution. It asserted that the parallel district court litigation is in its early stages with limited investment from the court and parties. Petitioner also stipulated that it would not pursue in the district court any invalidity ground instituted in this IPR, thereby avoiding duplicative efforts and ensuring judicial efficiency.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 27, 31-33, and 40-43 of the ’815 patent as unpatentable.