Align Technology Inc v. 3Shape AS

1. Case Identification

• Case #: IPR2022-00145
• 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 3D Scanning System with Motion-Based Control
• Brief Description: The ’221 patent describes a handheld device for scanning a three-dimensional (3D) environment, such as a patient’s mouth. The system uses a motion sensor within the handheld device to remotely control and manipulate the view of the scanned 3D model on a display.

3. Grounds for Unpatentability

Ground 1: Obviousness over Boerjes and Marvit - Claims 20-44 are obvious over Boerjes in view of Marvit.

• Prior Art Relied Upon: Boerjes (Application # 2009/0298017) and Marvit (Application # 2005/0212756).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Boerjes disclosed all elements of the independent claims except for a motion sensor used for remote display control. Boerjes taught a complete handheld 3D scanning system, including an optical scanner wand and a remotely connected display for viewing the 3D model. To supply the missing element, Petitioner asserted that Marvit taught a handheld electronic device with motion sensors (including accelerometers and gyros) specifically for providing gesture-based user input to control a display.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Marvit’s motion control with Boerjes’s scanning system to enhance the user interface with intuitive, gesture-based controls. This would allow an operator to manipulate the scanned 3D model without putting down the scanner, a known benefit. Both references were directed to portable handheld electronic devices connected to a display, making the combination straightforward.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because incorporating motion sensors like accelerometers into handheld devices was conventional at the time. The programming required to recognize motion and gesture inputs for display manipulation was well-understood.

Ground 2: Obviousness over Boerjes, Gandyra, and Marvit - Claims 20-44 are obvious over Boerjes and Gandyra, further in view of Marvit.

• Prior Art Relied Upon: Boerjes (Application # 2009/0298017), Gandyra (Application # 2009/0087050), and Marvit (Application # 2005/0212756).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative combination to supply the motion sensor teachings. Petitioner argued that Boerjes, as the base reference, taught the overall scanning system. Gandyra was introduced because it explicitly taught a handheld 3D intraoral scanner that included a plurality of acceleration sensors and gyrometers to determine the scanner's position and orientation. The combination of Boerjes and Gandyra therefore taught a handheld scanner with integrated motion sensors. Marvit was additionally cited for its detailed teachings on using motion and gesture data as inputs to manipulate a view on a remote display.
  • Motivation to Combine: A POSITA would combine Boerjes and Gandyra because both disclosed handheld 3D intraoral scanners, and incorporating Gandyra’s motion sensors was a predictable way to add position/orientation tracking to Boerjes’s system. A POSITA would further incorporate Marvit’s gesture-based input functionality to use the motion data from the combined Boerjes/Gandyra scanner to provide a more intuitive user interface for manipulating the 3D scan view.
  • Expectation of Success: Success was predictable as the combination involved the straightforward integration of known technologies (motion sensors) into an existing system (a 3D scanner) to achieve a well-known benefit (improved user control).

Ground 3: Obviousness over Quadling and Marvit - Claims 20-27 and 33-44 are obvious over Quadling in view of Marvit.

• Prior Art Relied Upon: Quadling (Application # 2005/0020910) and Marvit (Application # 2005/0212756).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Quadling taught an intraoral imaging system with a handheld imaging device and a head-mounted display (HMD). Quadling’s HMD included position sensors to adjust the displayed image based on the operator's head movement. While Quadling taught motion sensing, Petitioner argued it did not explicitly teach using motion sensors in the handheld device to control the display. Marvit was combined to supply this specific teaching, disclosing a handheld device using its own motion sensors to control a display.
  • Motivation to Combine: A POSITA would be motivated to incorporate Marvit's handheld motion control into Quadling’s system to enhance its user interface. This would allow the operator to control the view via movements of the handheld scanner itself, in addition to the head movements detected by the HMD, providing a more intuitive and comprehensive control scheme.
  • Expectation of Success: A POSITA would expect success in this combination because both references were in the field of portable electronics with displays, and implementing gesture-based controls from a handheld device using conventional motion sensors was a known and achievable design choice.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both §325(d) and §314(a).
  • §325(d): The petition asserted that the primary prior art references (Boerjes, Gandyra, Quadling, Marvit) were never applied or cited by the Examiner during the prosecution that led to the ’221 patent. Therefore, the petition presented new art and arguments not previously considered by the USPTO.
  • §314(a) (Fintiv): Petitioner argued the Fintiv factors weighed in favor of institution because the parallel district court litigation was in its early stages with limited investment. Critically, Petitioner stipulated that it would not pursue in the district court any invalidity ground that is instituted in this IPR, eliminating concerns of overlapping issues and duplicative efforts.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 20-44 of the ’221 patent as unpatentable.