Canfield Scientific Inc v. Quantificare SA

1. Case Identification

• Case #: IPR2021-01511
• Patent #: 10,070,119
• Filed: September 7, 2021
• Petitioner(s): Canfield Scientific, Inc.
• Patent Owner(s): QuantifiCare S.A.
• Challenged Claims: 1-4, 8-11

2. Patent Overview

• Title: Device and Method to Reconstruct Face and Body in 3D
• Brief Description: The ’119 patent discloses a stereophotogrammetry device for creating 3D reconstructions of subjects like the face or torso. The device uses a fixed-focus, dual-optic camera system and incorporates two distinct pairs of intersecting light beams to position a subject at two different, predefined distances for imaging.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 8 are obvious over Plassmann, Treuillet, and Staller.

• Prior Art Relied Upon: Plassmann (WO 2010/097572), Treuillet (a 2009 IEEE article), and Staller (Patent 7,257,322).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Plassmann taught the core stereophotogrammetry device of claim 1, including a camera body, dual-optics for simultaneous image acquisition, and a positioning system with a single pair of intersecting light beamers to define one imaging distance. Treuillet, describing the same underlying device (MAVIS II), was cited to show it possessed a substantial depth of field (e.g., a 30 cm range) capable of accurately imaging subjects at multiple distances within that range. Staller was presented as teaching the missing element: an improved positioning system for a camera that uses multiple pairs of intersecting light beams, selectable via a switch, to reproducibly position a subject at different, predefined distances (e.g., a closer and a farther position). Petitioner asserted that combining Staller’s multi-distance positioning system with the Plassmann/Treuillet device rendered the apparatus of claim 1 obvious. Dependent claims 2-4 were argued to be obvious as the predefined positions would inherently be within the device's depth of field (claim 2), and a POSITA would find it obvious to configure the distances to achieve different fields of view for imaging different body parts, such as A4-size for a face and A3-size for a torso (claims 3-4).
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to solve a known problem. The Plassmann/Treuillet device was used for applications like wound monitoring, which involves imaging subjects of various sizes. A POSITA would be motivated to improve this device to allow for imaging at different, repeatable distances to achieve varying levels of magnification. Staller provided a known, elegant solution for this exact need, teaching a switch-selectable, multi-distance light beamer system to ensure repeatable scale in medical photography. Applying Staller’s well-understood positioning system to Plassmann’s stereophotogrammetry device was therefore a predictable step to improve its functionality.
  • Expectation of Success: Petitioner contended that a POSITA would have a high expectation of success. The combination involved adding a second set of light emitters and a selector switch, as taught by Staller, to the existing Plassmann device. This was characterized as a straightforward integration of known components for their intended purposes, with predictable and successful results.

Ground 2: Claims 9-11 are obvious over Plassmann, Treuillet, Staller, and Peng.

• Prior Art Relied Upon: Plassmann (WO 2010/097572), Treuillet (a 2009 IEEE article), Staller (Patent 7,257,322), and Peng (a 2015 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the device and method of use established in Ground 1 to address the method claims for processing captured images. Claims 9-11 recite steps of taking several stereo-pairs and then using a computer to reconstruct, match, and stitch the resulting 3D surfaces into a comprehensive 3D model. Petitioner argued that the need to take multiple stereo-pairs to capture a large, curved surface like a face or torso was well-known. The key teachings for the processing steps were supplied by Peng, which explicitly discloses methods for "3D model stitching for adjacent scenes." Peng taught reconstructing individual 3D models and then spatially matching and stitching them together to create a large, integrated scene. This directly corresponds to the method steps recited in the challenged claims.
  • Motivation to Combine: The motivation to add Peng was direct and compelling. After using the obvious device from Ground 1 to capture multiple stereo-pairs of a subject, a POSITA would require a method to combine the resulting individual 3D reconstructions into a single, comprehensive model. Peng addressed this exact need by providing a known method for 3D model stitching. Petitioner argued that it would have been a natural and obvious step for a POSITA to apply the image processing techniques of Peng to the image data generated by the Plassmann/Treuillet/Staller device.
  • Expectation of Success: Success would be reasonably expected because the ’119 patent itself provided no specific technical details for its stitching method, merely stating it was performed by a computer program. This implied the process was routine for a POSITA. Applying the known software-based stitching methods taught by Peng was a standard, well-understood task in the field with a high probability of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors would be inappropriate. The petition asserted that the parallel district court litigation was in its early stages, with minimal investment by the parties and the court. No trial date had been set, and it was not expected to conclude before the Board could issue a Final Written Decision (FWD). Citing a liberal policy for stays in the relevant district, Petitioner argued that a stay was likely, further weighing in favor of institution. These factors, Petitioner contended, strongly favored institution of the inter partes review (IPR) over discretionary denial.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-4 and 8-11 of Patent 10,070,119 as unpatentable.