Align Technology Inc v. 3Shape AS

1. Case Identification

• Case #: IPR2022-00144
• Patent #: RE48,221
• Filed: November 9, 2021
• Petitioner(s): Align Technology, Inc.
• Patent Owner(s): 3Shape A/S
• Challenged Claims: 20-44

2. Patent Overview

• Title: Handheld Device for Scanning a 3D Environment and Remotely Controlling a Display
• Brief Description: The ’221 patent describes a handheld 3D scanning system that can also function as a remote control. The system allows an operator to use motion sensors within the handheld scanner to manipulate the visual representation of the scanned 3D environment on a separate display, such as by rotating, panning, or zooming the image.

3. Grounds for Unpatentability

Ground 1: Claims 20-34 and 37-44 are obvious over Serra.

• Prior Art Relied Upon: Serra (Application # 2006/0020204).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Serra disclosed all key elements of the independent claims, including a system with a handheld probe for capturing 3D images (a handheld device with a scanner) and a computer with a display for showing the captured images. Critically, Petitioner asserted that Serra's "3D sensor," used to track the probe's position and orientation to rotate the virtual scene on the display, met the "motion sensor" limitation for remotely controlling the display. For dependent claims requiring specific sensor types (accelerometer, gyro, or magnetometer), Petitioner contended that Serra's generic "3D sensor" disclosure would have been understood by a Person of Ordinary Skill in the Art (POSITA) to inherently include these well-known and conventional motion sensor species.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference. The motivation argument focused on a POSITA's general knowledge. A POSITA would have naturally implemented Serra's generic "3D sensor" using common, off-the-shelf components like accelerometers and gyroscopes to achieve the disclosed functionality of tracking position and orientation.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as using accelerometers and gyros for 3D motion tracking was a well-understood and predictable art at the time.

Ground 2: Claims 20-44 are obvious over Serra, Kriveshko, and Marvit.

• Prior Art Relied Upon: Serra (Application # 2006/0020204), Kriveshko (Application # 2007/0171220), and Marvit (Application # 2005/0212756).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner used Serra as the base reference for a handheld scanning system with a motion-based remote control interface. Kriveshko was introduced to explicitly teach an optical intra-oral 3D scanner, a feature Petitioner argued was an obvious modification to Serra's more general medical imaging probe. Marvit was then added to teach a handheld device that explicitly uses accelerometers and gyros to detect movement and gestures, providing a more specific teaching for the motion sensor element than Serra's generic "3D sensor."
  • Motivation to Combine (for §103 grounds): A POSITA would combine Serra and Kriveshko to gain the benefits of optical intra-oral scanning within Serra's interactive system, a known and desirable application. A POSITA would then incorporate the teachings of Marvit to implement Serra's motion control functionality using Marvit's well-understood accelerometers and gyros to enable more robust gesture-based inputs for manipulating the 3D image, which was a known technique for improving user interfaces.
  • Expectation of Success (for §103 grounds): The combination involved applying known technologies (optical scanning, motion sensors) for their intended purposes, leading to a high expectation of success in producing the claimed system with predictable results.

Ground 3: Claims 20-44 are obvious over Knighton and Marvit.

• Prior Art Relied Upon: Knighton (Application # 2005/0237581) and Marvit (Application # 2005/0212756).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Knighton, as the primary reference, disclosed a handheld optical scanner that already included position sensors comprising "a set of gyroscopes and accelerometers" to generate movement data. This data could be used by a processor to generate a 3D representation of a target. Marvit was then combined to explicitly teach using such motion sensor data to implement gesture-based controls (e.g., translation, rotation, zoom) for manipulating a view on a display.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the references to enhance the user interface of Knighton's scanner. While Knighton taught using motion sensors to generate the 3D model, Marvit taught using similar sensors to intuitively control the view of the model. A POSITA would be motivated to add Marvit's gesture-based view manipulation to Knighton's scanner to provide a more intuitive and efficient user experience, a well-known goal in user interface design.
  • Expectation of Success (for §103 grounds): Success was expected because Knighton already provided the necessary hardware (motion sensors, processor), and Marvit provided the known software logic for translating motion data into view control commands. Integrating this functionality would be a straightforward application of known principles.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate. Under 35 U.S.C. §325(d), Petitioner contended that the Examiner made significant errors during the reissue prosecution by overlooking a prior IPR decision that invalidated the parent patent's claims, upon which the challenged claims are substantially based.
• Under 35 U.S.C. §314(a) and the Fintiv factors, Petitioner argued that the co-pending district court litigation was in its early stages, a stay was likely, and Petitioner stipulated not to pursue the same invalidity grounds in district court if the IPR is instituted, thereby avoiding significant overlap and promoting efficiency.

5. Relief Requested

• Petitioner requests institution of an inter partes review and a final written decision finding claims 20-44 of the ’221 patent unpatentable as obvious under 35 U.S.C. §103.