Canfield Scientific Inc v. Quantificare SA

1. Case Identification

• Case #: IPR2021-01518
• Patent #: 10,165,253
• Filed: September 8, 2021
• Petitioner(s): Canfield Scientific, Inc.
• Patent Owner(s): QuantifiCare S.A.
• Challenged Claims: 1-4, 8-12, 15-16, and 20-23

2. Patent Overview

• Title: Device and Method to Reconstruct Face and Body in 3D
• Brief Description: The ’253 patent relates to a stereophotogrammetry device that uses a positioning system with at least two pairs of intersecting light beams to reproducibly image a subject at two or more distinct, predefined distances (e.g., a closer distance for a face and a farther distance for a torso).

3. Grounds for Unpatentability

Ground 1: Obviousness over Plassmann, Treuillet, and Staller - Claims 1-4, 8-11, 15-16, and 20 are obvious over Plassmann in view of 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 a stereophotogrammetry device (the “MAVIS” device) with a camera body, double-optics for simultaneous image acquisition, and a positioning system using a single pair of intersecting light beams to define one imaging distance. Treuillet, discussing the same MAVIS device, disclosed that it had a substantial depth of field (e.g., a 30 cm range) within which subjects could be accurately imaged, meaning the device was inherently capable of imaging at multiple distances. However, the Plassmann/Treuillet device lacked a mechanism to reproducibly position subjects at more than one of these distances. Staller was argued to remedy this deficiency by disclosing a camera attachment with a positioning system that used multiple, selectable pairs of intersecting light beams to reproducibly position a subject at several distinct distances from the camera.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to improve the functionality of the Plassmann/Treuillet device. Knowing from Treuillet that the device could image across a wide range of distances, a POSITA would be motivated to enable reproducible imaging at multiple predefined points within that range to accommodate subjects of different sizes (e.g., wounds, faces, torsos) or to achieve different levels of magnification. Staller provided a known, off-the-shelf solution for this exact purpose: adding multiple pairs of light beamers.
  • Expectation of Success: A POSITA would have a high expectation of success because the combination involved applying a known positioning technique (Staller) to a known type of imaging device (Plassmann/Treuillet) to achieve the predictable result of reproducible, multi-distance positioning.

Ground 2: Obviousness over Plassmann, Treuillet, Staller, and Kingslake - Claim 12 is obvious over the combination of Plassmann, Treuillet, and Staller in further view of Kingslake.

• Prior Art Relied Upon: Plassmann (WO 2010/097572), Treuillet (a 2009 IEEE article), Staller (Patent 7,257,322), and Kingslake (a 1989 book on photographic lenses).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the combination of Plassmann, Treuillet, and Staller taught all limitations of claim 1, as argued in Ground 1. Dependent claim 12 adds the limitation of a specific lens system within the sub-optics, comprising a plano-convex lens, a biconcave lens, and an achromatic doublet lens in that order. Kingslake was shown to disclose this exact three-element lens configuration as the well-known and ubiquitous "Tessar" lens, popular for over a century for providing sharp images.
  • Motivation to Combine: A POSITA building the stereophotogrammetry device of the primary combination would be motivated to use a high-quality, commercially available lens to ensure sharp images. The Tessar lens described in Kingslake was a well-known, excellent choice for this purpose, and other prior art had already suggested its use in stereophotogrammetry applications.
  • Expectation of Success: Incorporating a standard, well-understood lens design into a camera system for its intended purpose of capturing images is a simple and predictable modification that a POSITA would expect to succeed.

Ground 3: Obviousness over Plassmann, Treuillet, Staller, and Peng - Claims 21-23 are obvious over the combination of Plassmann, Treuillet, and Staller in further view of 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 addresses method claims 21-23, which depend from claims reciting the device of Ground 1. These claims add method steps for processing multiple stereo-pairs by: (1) reconstructing 3D surfaces from each pair, (2) matching the different 3D surfaces, and (3) stitching them together into a comprehensive 3D model. Petitioner argued that Peng taught a conventional method for this exact process, describing "3D model stitching for adjacent scenes" to "reconstruct a large and integrated scene using several 3D models from different perspective views."
  • Motivation to Combine: The ’253 patent itself acknowledged that imaging large or curved surfaces like a face or torso requires capturing several stereo-pairs. A POSITA would therefore need a method to combine the resulting 3D surface data into a single, comprehensive model. Peng provided a well-understood, published method for performing this necessary data processing step.
  • Expectation of Success: A POSITA would have reasonably expected success in applying the standard image processing and stitching algorithms from Peng to the stereo-pair data generated by the device of the primary references. The patent’s lack of detail on how to perform these steps further suggested it was a routine, well-known technique.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. The petition asserted that the parallel district court proceeding was in its earliest stages, with minimal investment by the parties or the court and no trial date set. Petitioner contended a stay was likely, and that the PTAB was the only venue where the Patent Owner's participation was assured, as the Patent Owner had moved to be dismissed from the district court counterclaim. Petitioner also argued that denial under §325(d) was unwarranted because the petition presented new prior art and arguments not previously considered by the USPTO.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-4, 8-12, 15-16, and 20-23 of the ’253 patent as unpatentable.