Align Technology Inc v. 3Shape AS

1. Case Identification

• Case #: PGR2018-00103
• Patent #: 9,962,244
• Filed: October 26, 2018
• Petitioner(s): Align Technology, Inc.
• Patent Owner(s): 3Shape A/S
• Challenged Claims: 1-5, 7-10, 12, 15, 16, 18, 21-22, 24, 26, 28, and 29

2. Patent Overview

• Title: 3D Scanning of Surface Geometry and Surface Color
• Brief Description: The ’244 patent discloses a focus scanner and method for three-dimensional (3D) scanning of an object's surface geometry and color, particularly for intraoral dental scanning. The system captures a series of 2D images at different focal planes to create a "stack," from which a digital 3D representation expressing both geometry and color is derived.

3. Grounds for Unpatentability

Ground 1 & 2: Obviousness over Fisker with Weighted Averaging - Claims 1-5, 7-10, 15-16, 18, 21-22, 24, 26, and 28 are obvious over Fisker in view of Szeliski or Matsumoto.

• Prior Art Relied Upon: Fisker (Application # 2012/0092461), Szeliski (Patent 6,097,854), and Matsumoto (Patent 7,106,348).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, Fisker, disclosed a handheld confocal scanner that met most limitations of independent claim 1. This included a multichromatic light source, a color image sensor, and a data processing system configured to operate by capturing a series of 2D images at different focal planes to form a stack, from which both geometry and color information are derived. Petitioner contended the main limitation not taught by Fisker was claim 1’s requirement of "computing a weighted average of sub-scan color values derived for corresponding points in overlapping sub-scans." To supply this teaching, Petitioner pointed to Szeliski and Matsumoto. Szeliski was cited for its method of blending color data from corresponding pixels in overlapping images using a weighted average calculation to form a composite 3D model. Similarly, Matsumoto was cited for its weighted mean process applied to image information from different viewpoints to improve texture and accuracy in a 3D model.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine the systems. Fisker, Szeliski, and Matsumoto were described as analogous art, all concerned with improving 3D image quality from multiple 2D captures. A POSITA would have been motivated to incorporate the known weighted averaging techniques of Szeliski or Matsumoto into Fisker’s system to improve image quality and accuracy when combining multiple sub-scans, which was a common and well-understood goal in the field of 3D dental imaging.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved implementing known image processing algorithms (from Szeliski or Matsumoto) into the data processing system of a known scanner type (Fisker). This was presented as a routine software modification without the need for additional hardware.

Ground 3 & 4: Obviousness over Fisker with Saturation Correction - Claim 29 is obvious over Fisker in view of Yamada or Suzuki.

• Prior Art Relied Upon: Fisker (Application # 2012/0092461), Yamada (Application # 2007/0035641), and Suzuki (Application # 2013/0070128).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that claim 29 contained the limitations of claim 1 (taught by Fisker) plus the additional limitation of a data processing system configured for "detecting saturated pixels in the captured 2D images and for mitigating or removing the error" in the derived color information. While Fisker acknowledged that shiny surfaces can cause image saturation, it only disclosed a passive mitigation technique (a polarizing beam splitter) and failed to teach actively detecting saturated pixels and correcting the resulting error. Petitioner asserted that Yamada taught a "white-saturation detection unit" for identifying saturated pixels and a subsequent "pixel-value correction" step using interpolation. Likewise, Suzuki was shown to disclose a digital camera that detects defective pixels (including saturated white defects) and corrects their value based on a weighted average of surrounding pixels.
  • Motivation to Combine: A POSITA would combine the references to solve a known problem. Fisker identified the issue of saturation but provided an incomplete solution. To produce the high-quality images desired in the field, a POSITA would have been motivated to look for and implement known, active solutions for pixel saturation, such as the detection and correction methods taught by Yamada and Suzuki.
  • Expectation of Success: Petitioner argued success would be expected, as it required integrating established software-based algorithms for saturation correction (from Yamada or Suzuki) into the image processing pipeline of Fisker's system, a predictable and routine enhancement.

• Additional Grounds: Petitioner asserted numerous other obviousness challenges. These included various three- and four-way combinations of Fisker, Szeliski, Matsumoto, Yamada, and Suzuki to challenge claim 12 (reciting saturation detection). Further grounds relied on a different primary reference, Thiel (Application # 2012/0075425 and Application # 2011/0080576), in combination with Szeliski, Matsumoto, Yamada, Suzuki, and/or Fisker to challenge nearly all of the same claims based on similar obviousness rationales.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. § 325(d). Although the primary reference, Fisker, was before the Examiner during prosecution, Petitioner contended that the secondary references providing the key inventive concepts (e.g., Szeliski, Matsumoto, Yamada, Suzuki) were never considered by the Examiner. Petitioner asserted that the Examiner performed only a cursory search, failed to combine Fisker with any other reference, and provided no substantive reasoning for allowing the claims, thereby erring in a way that warrants review.

5. Relief Requested

• Petitioner requests the institution of a Post-Grant Review (PGR) and cancellation of claims 1-5, 7-10, 12, 15, 16, 18, 21-22, 24, 26, 28, and 29 of the ’244 patent as unpatentable.