Medit Corp v. 3Shape AS

1. Case Identification

• Case #: IPR2023-01317
• Patent #: 11,368,667
• Filed: August 18, 2023
• Petitioner(s): Medit Corp
• Patent Owner(s): 3Shape As
• Challenged Claims: 1-3, 5-8, 13-16, 18-20, 22, 26, 28, and 29

2. Patent Overview

• Title: Handheld Intraoral Scanner
• Brief Description: The ’667 patent describes a handheld intraoral scanner for determining the three-dimensional (3D) geometry and color of an object, such as teeth. The scanner uses a pattern generator to project a time-varying illumination pattern onto the object and captures a plurality of 2D images to reconstruct the 3D surface.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-3, 5-8, 13-16, 18-20, 22, 26, 28, and 29 over Orametrix in view of Faul, Breton, and Knighton.

• Prior Art Relied Upon: Orametrix (WO 01/84479), Faul (Patent 7,336,375), Breton (Patent 6,008,905), and Knighton (Application # 2005/0237581).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Orametrix discloses the foundational elements of the challenged claims, including a handheld intraoral scanner that uses a time-varying structured light pattern to determine the 3D geometry and color of teeth from a plurality of 2D images. Petitioner asserted a POSITA would have combined this base system with teachings from Faul, Breton, and Knighton to arrive at the claimed invention.
  • Specifically, Petitioner mapped that Faul teaches making the handheld scanner wireless and performing local processing on the captured data to reduce the amount of data transmitted, addressing limitations in claims 1, 6, 7, 14, and 29. Knighton was cited for its disclosure of incorporating non-optical motion sensors, such as accelerometers and gyroscopes, directly into the scanner to track its 3D motion and position, which Petitioner argued would have been an obvious addition to the Orametrix/Faul system to meet the motion sensor limitations of claims 1, 13, 16, 18, 26, and 28.
  • To meet the color-capture limitations, Petitioner relied on Breton, which teaches a system for accurately determining tooth color by stepping a light source through different wavelengths (e.g., red, blue, green) and capturing an image for each. Petitioner argued it would be obvious to integrate Breton’s precise color measurement technique into the Orametrix/Faul scanner, thereby teaching the limitations of selectively switching the probe light color and recording images at different times for different colors, as required by independent claims 1, 14, and 26. Dependent claims 2, 3, 19, and 20, which recite using at least three monochromatic light sources, were also alleged to be taught by Breton. Finally, claim 5’s limitation of a single reflective mirror in the tip was argued to be disclosed by Breton's optical design for directing light onto a tooth.
  • Motivation to Combine: Petitioner contended that a POSITA would combine these references because they all belong to the same technical field of 3D intraoral scanning and share the common goal of improving the accuracy, ease of use, and functionality of such devices. A POSITA would have been motivated to create a more accurate and ergonomic scanner by integrating known solutions for wireless operation (Faul), precise motion tracking (Knighton), and accurate color measurement (Breton) into a foundational structured-light scanning system like Orametrix. The combination would solve known problems and yield predictable results.
  • Expectation of Success: Petitioner argued that a POSITA would have a reasonable expectation of success because combining these features involved applying conventional and well-understood technologies. The integration of wireless modules, motion sensors, and multi-wavelength light sources into handheld electronic devices was routine at the time. The combination represented a simple substitution of known elements to achieve predictable improvements.

4. Key Claim Construction Positions

• Petitioner asserted that, based on a District Court order in related litigation, the preambles of independent claims 1, 14, and 26 are not limiting and should be afforded their plain and ordinary meanings.
• Petitioner also noted the District Court’s construction of "data for the 3D geometry" (claims 8, 15) to mean "the data for the 3D geometry."

5. Arguments Regarding Discretionary Denial

• Arguments against §314(a) Denial: Petitioner argued against discretionary denial under the Fintiv factors by stipulating that, if the IPR is instituted, it will not pursue in the parallel district court litigation the same grounds that are raised or could have reasonably been raised in the petition. Petitioner asserted this stipulation is dispositive in favor of not denying institution under §314(a).
• Arguments against §325(d) Denial: Petitioner contended that denial under §325(d) would be improper because the same or substantially the same art and arguments were not previously presented to the USPTO. Although Orametrix and Knighton were cited on the face of the ’667 patent, Petitioner argued they were not discussed, relied upon, or used as the basis for any rejection by the examiner during prosecution. Furthermore, Petitioner noted that the issued claims were allowed on the first office action without any prior art rejections, demonstrating that the examiner did not substantively consider the teachings of the asserted prior art.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5-8, 13-16, 18-20, 22, 26, 28, and 29 of the ’667 patent as unpatentable.