Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 1 of 13 PageID #: 428
`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 1 of 13 PageID #: 428
`
`
`
`
`
`EXHIBIT 5
`EXHIBIT 5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 2 of 13 PageID #: 429
`Trials@uspto.gov
`Paper No. 6
`571-272-7822
`Entered: May 24, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALIGN TECHNOLOGY, INC.,
`Petitioner
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`____________
`
`Case IPR2018-00196
`Patent 9,629,551 B2
`____________
`
`
`
`Before ELENI MANTIS MERCADER, MICHELLE N. WORMMEESTER,
`and JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 3 of 13 PageID #: 430
`IPR2018-00196
`Patent 9,629,551 B2
`
`
`Align Technology, Inc. (“Petitioner”) filed a Petition pursuant to
`35 U.S.C. §§ 311–19 to institute an inter partes review of claims 1–25 of
`U.S. Patent No. 9,629,551 B2, issued on April 25, 2017 (Ex. 1001, “the ’551
`patent”). Paper 2 (“Pet.”). 3Shape A/S (“Patent Owner”) filed a preliminary
`response. Paper 5 (“Prelim. Resp.”). Applying the standard set forth in
`35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood
`that Petitioner would prevail with respect to at least one challenged claim,
`we deny Petitioner’s request and do not institute an inter partes review of
`any challenged claim.
`
`
`
`
`I. BACKGROUND
`A. The ʼ551 Patent (Ex. 1001)
`The ʼ551 patent relates to a method for detecting a movable object in
`a location, when scanning a rigid object in the location by means of a 3D
`scanner for generating a virtual 3D model of the rigid object. Ex. 1001, 1:6–
`9. As one example, the ’551 patent discusses scanning a patient’s teeth
`using a handheld scanner. Id. at 1:9–11. The ’551 patent describes its
`subject matter as follows.
`A method for detecting a movable object in a location includes –
`providing a first 3D representation of at least part of a surface by
`scanning; –providing a second 3D representation of at least part
`of the surface by scanning; –determining for the first 3D
`representation a first excluded volume; –determining for the
`second 3D representation a second excluded volume; –if a
`portion of the surface in the first 3D representation is located in
`space in the second excluded volume, the portion of the surface
`in the first 3D representation is disregarded, and/or –if a portion
`of the surface in the second 3D representation is located in space
`in the first excluded volume, the portion of the surface in the
`second 3D representation is disregarded.
`2
`
`
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 4 of 13 PageID #: 431
`IPR2018-00196
`Patent 9,629,551 B2
`
`Id. at [57].
`
`Illustrative Claim
`B.
`Claims 1–25 are challenged. Claim 1 is illustrative of the challenged
`claims, and is reproduced below:
`1. A method for detecting a movable object in a location,
`when scanning a rigid object in the location by means of a 3D
`scanner for generating a virtual 3D model of the rigid object,
`wherein the method comprises:
`providing a first 3D representation of at least part of a
`surface by scanning at least part of the location;
`providing a second 3D representation of at least part of
`the surface by scanning at least part of the location;
`determining for the first 3D representation a first
`excluded volume in space where no surface can be present in
`both the first 3D representation and the second 3D
`representation;
`determining for the second 3D representation a second
`excluded volume in space where no surface can be present in
`both the first 3D representation and the second 3D
`representation;
`if a portion of the surface in the first 3D representation is
`located in space in the second excluded volume, the portion of
`the surface in the first 3D representation is disregarded in the
`generation of the virtual 3D model, and/or
`if a portion of the surface in the second 3D representation
`is located in space in the first excluded volume, the portion of
`the surface in the second 3D representation is disregarded in the
`generation of the virtual 3D model.
`Id. at 29:45–30:2.
`
`C. Related Proceedings
`Petitioner states that the ’551 patent has not been involved in any
`litigation proceedings. Pet. 75. Petitioner identifies another inter partes
`review proceeding (IPR2018-00195) also challenging the ’551 patent as well
`as a pending patent application that claims priority to the ’551 patent. Id.
`
`
`
`3
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 5 of 13 PageID #: 432
`IPR2018-00196
`Patent 9,629,551 B2
`
`Patent Owner also identifies the same inter partes review and another
`pending patent application. Paper 4, 1.
`
`D. References
`Petitioner relies on the following references:
`1. “Bernardini” (US 6,750,873 B1; issued June 15, 2004) (Ex.
`1018);
`2. “Rubbert” (US 7,741,821 B2; issued Dec. 30, 2008) (Ex. 1019);
`3. “Thiel” (US 2009/0279103 A1; published Nov. 12, 2009) (Ex.
`1024);
`4. “Newcombe” (US 2012/0195471 A1; published Aug. 2, 2012)
`(Ex. 1020); and
`5. “Bodony” (US 2012/0141949 A1; published June 7, 2012) (Ex.
`1021).1
`E. Grounds Asserted
`Petitioner challenges the patentability of the ʼ551 patent claims on the
`
`following grounds:
`
`
`
`Reference(s)
`Claim(s)
`Basis
`35 U.S.C. § 103(a) 1, 6–8, 11–13, 15, 16,
`Bernardini
`and 20–25
`35 U.S.C. § 103(a)
`2–5, 18, and 19
`Bernardini and Rubbert
`35 U.S.C. § 103(a)
`9 and 10
`Bernardini and Thiel
`35 U.S.C. § 103(a)
`14
`Bernardini and Newcombe
`35 U.S.C. § 103(a)
`17
`Bernardini and Bodony
`Petitioner also relies on expert testimony from Dr. Chandrajit L.
`Bajaj, Ph.D. (Ex. 1003, “Bajaj Decl.”).
`
`1 Patent Owner contends Petitioner has not adequately shown that Bodony
`qualifies as prior art for purposes of this proceeding. Prelim. Resp. 57–60.
`Because we find Petitioner has not demonstrated a reasonable likelihood of
`success for other reasons discussed below, we do not address this issue.
`4
`
`
`
`
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 6 of 13 PageID #: 433
`IPR2018-00196
`Patent 9,629,551 B2
`
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`that standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`Petitioner offers constructions of “moveable object” and “excluded
`volume” in its Petition. Pet. 10–12. Patent Owner disputes Petitioner’s
`proposed constructions. Prelim. Resp. 7–21. We determine we need only
`address Petitioner’s proposed construction of “excluded volume,” as
`discussed further below, and that we need not explicitly construe any terms
`for purposes of this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy”).
`In particular, Petitioner contends that “the plain and ordinary meaning
`of ‘excluded volume’ is ‘a scan volume, or a sub-volume of the scan
`volume, where no surface of the scan object is present.’” Pet. 11–12. Patent
`Owner disputes this construction, in part, because Petitioner’s proposed
`construction does not take into account the larger claim recitation “excluded
`volume in space where no surface can be present in both the first 3D
`representation and the second 3D representation.” Prelim. Resp. 13. We
`
`
`
`5
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 7 of 13 PageID #: 434
`IPR2018-00196
`Patent 9,629,551 B2
`
`agree with Patent Owner. Particularly, as recited in claim 1, an “excluded
`volume” is not merely “a scan volume, or a sub-volume of the scan volume,
`where no surface of the scan object is present”; instead, claim 1 recites
`“determining for the first 3D representation a first excluded volume in space
`where no surface can be present in both the first 3D representation and the
`second 3D representation.” Thus, claim 1 imposes additional requirements
`on the recited “excluded volume” beyond those in Petitioner’s proposed
`construction. We determine we need not further construe this limitation to
`resolve the issues before us.
`B. Asserted Obviousness Over Bernardini
`Petitioner contends that claims 1, 6–8, 11–13, 15, 16, and 20–25 are
`unpatentable as obvious over Bernardini. Pet. 13–47. For the reasons that
`follow, we are persuaded, based on this record, that Petitioner has not
`demonstrated a reasonable likelihood of prevailing on this challenge.
`Overview of Bernardini
`1.
`Bernardini relates to a system and method for constructing a digital
`model of an object. Ex. 1018, at [57]. Bernardini describes taking multiple
`surface scans and “reconstructing substantially seamless surface texture data
`for the model using weights that reflect a level of confidence in the data at a
`plurality of surface points.” Id. Figure 6 of Bernardini is reproduced below.
`
`
`
`6
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 8 of 13 PageID #: 435
`IPR2018-00196
`Patent 9,629,551 B2
`
`
`
`Figure 6 depicts “an occlusions example wherein point pi1 is visible from
`camera position Ci, but not from Cm.” Id. at 11:26–28.
`Analysis
`2.
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in the record, objective
`
`
`
`7
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 9 of 13 PageID #: 436
`IPR2018-00196
`Patent 9,629,551 B2
`
`evidence of nonobviousness.2 See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). In that regard, an obviousness analysis “need not seek out
`precise teachings directed to the specific subject matter of the challenged
`claim, for a court can take account of the inferences and creative steps that a
`person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
`Claim 1 recites “determining for the first 3D representation a first
`excluded volume in space where no surface can be present in both the first
`3D representation and the second 3D representation.” Ex. 1001, 29:53–56.
`Petitioner contends Bernardini teaches this limitation. Pet. 20–24. In doing
`so, Petitioner relies on its proposed construction for “excluded volume.” Id.
`at 21. In addition, Petitioner relies on Figures 6 and 8B and the associated
`descriptions of those figures in Bernardini. Id. at 21–24. Petitioner contends
`Bernardini discloses “discarding occluded parts such as scan Si in FIG. 6.”
`Id. at 22 (citing Ex. 1018, 11:7–25, Fig. 6). Petitioner concedes “Bernardini
`does not explicitly use the term ‘excluded volume,’” but Petitioner contends
`determining the excluded volume would have been obvious to a person of
`ordinary skill “because the method does not consider (i.e., disregards) a
`detected occluding surface based on collected data.” Id. at 24 (citing Ex.
`1003 ¶ 93). Petitioner further contends it would have been obvious “to
`combine the volume in the camera’s view-frustum between the camera
`position and orientation and the loaded surface scan (i.e., scan volume),
`detailed by the surface scans and depth map, to determine a volume where
`
`
`2 At this stage of the proceeding, neither party introduced objective evidence
`of non-obviousness or argued that the existence of secondary considerations
`affects this Decision’s obviousness analysis. Accordingly, based on the
`current record, our analysis is based upon the first three of the four Graham
`factors.
`
`
`
`8
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 10 of 13 PageID #: 437
`IPR2018-00196
`Patent 9,629,551 B2
`
`no surface of the scan object is present, and where outlying surface data is
`removed.” Id. (citing Ex. 1003 ¶¶ 93–94).
`We have reviewed Petitioner’s arguments and evidence, and find they
`do not sufficiently show that Bernardini teaches “determining for the first
`3D representation a first excluded volume in space where no surface can be
`present in both the first 3D representation and the second 3D
`representation.” We agree with Patent Owner (Prelim. Resp. 41 n.3) that
`Petitioner and its expert inconsistently contend Bernardini discloses
`discarding “occluded parts” and discarding an “occluding surface.”
`Compare Pet. 22 (“Bernardini discloses discarding occluded parts”); Ex.
`1003 ¶ 90 (same), with Pet. 24 (Bernardini’s “method does not consider (i.e.,
`disregards) a detected occluding surface”); Ex. 1003 ¶ 93. In addition,
`Petitioner cites Dr. Bajaj’s testimony to support its obviousness analysis
`above. However, the cited portions of Dr. Bajaj’s declaration use
`substantially similar language to the Petition without further explanation
`(i.e., his testimony contends a person of ordinary skill in the art would have
`understood from Bernardini’s disclosure the same things Petitioner contends
`would have been obvious without further explanation). See Ex. 1003 ¶¶ 93–
`94. We find this analysis insufficient to show that a person of ordinary skill
`would have found “determining for the first 3D representation a first
`excluded volume in space where no surface can be present in both the first
`3D representation and the second 3D representation” obvious from
`Bernardini’s disclosures.
`In sum, Petitioner has not persuasively explained, or provided
`sufficient evidence to show, that Bernardini teaches “determining for the
`first 3D representation a first excluded volume in space where no surface
`
`
`
`9
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 11 of 13 PageID #: 438
`IPR2018-00196
`Patent 9,629,551 B2
`
`can be present in both the first 3D representation and the second 3D
`representation,” as recited in claim 1.3
`Claim 22 recites “[a] nontransitory computer readable medium
`encoded with a computer program product comprising program code for
`causing a data processing system to perform the method of claim 1, when
`said program code is executed on the data processing system.” Ex. 1001,
`31:30–34. Claim 23 recites a system with a hardware processor configured
`to perform steps similar to those recited in claim 1. Id. at 31:35–32:13.
`Claim 25 recites a method with similar steps to claim 1 but requires only a
`single “determining” step and a single disregarding step. Id. at 32:23–46.
`Petitioner relies on its analysis of claim 1 for claims 22, 23, and 25. Pet. 42–
`47. As we determined above, that analysis does not show a reasonable
`likelihood of success. Claims 6–8, 11–13, 15, 16, 20, 21, and 24 depend
`from independent claim 1 or 23. Petitioner’s contentions regarding these
`dependent claims do not cure the deficiencies discussed above. See Pet. 30–
`42, 46.
`For the reasons discussed above, Petitioner has not demonstrated a
`reasonable likelihood of prevailing in showing that claims 1, 6–8, 11–13, 15,
`16, and 20–25 are unpatentable as obvious over Bernardini.
`C. Remaining Obviousness Grounds
`Petitioner contends that claims 2–5, 18, and 19 are unpatentable as
`obvious over Bernardini and Rubbert, claims 9 and 10 are unpatentable as
`obvious over Bernardini and Thiel, claim 14 is unpatentable as obvious over
`
`
`3 Because we find Petitioner has not shown a reasonable likelihood of
`prevailing on this challenge for the reasons discussed above, we do not reach
`Patent Owner’s other arguments as to this challenge.
`10
`
`
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 12 of 13 PageID #: 439
`IPR2018-00196
`Patent 9,629,551 B2
`
`Bernardini and Newcombe, and claim 17 is unpatentable as obvious over
`Bernardini and Bodony. Pet. 47–75. The claims challenged in these
`grounds depend from claim 1. Petitioner’s analysis of these claims focuses
`on the additional limitations and does not cure the deficiencies in
`Petitioner’s analysis of claim 1 discussed above. See id. Accordingly,
`Petitioner has not demonstrated a reasonable likelihood of prevailing on
`these obviousness challenges.
`
`
`III. SUMMARY
`We determine that Petitioner has not demonstrated a reasonable
`
`likelihood of prevailing on its challenges to claims 1–25 of the ’551 patent.
`
`IV. ORDER
`
`It is, therefore,
`ORDERED that the Petition is DENIED and no trial is instituted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`

`

`Case 1:20-cv-01492-UNA Document 5-5 Filed 11/02/20 Page 13 of 13 PageID #: 440
`IPR2018-00196
`Patent 9,629,551 B2
`
`
`PETITIONER:
`Robert Greene Sterne
`Jason D. Eisenberg
`Salvador Bezos
`Trent W. Merrell
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`rsterne-ptab@skgf.com
`jasone-ptab@skgf.com
`sbezos-ptab@skgf.com
`tmerrell-PTAB@skgf.com
`PTAB@skgf.com
`
`PATENT OWNER:
`Todd R. Walters
`Roger H. Lee
`Mythili Markowski
`Stephany G. Small
`Buchanan Ingersoll & Rooney PC
`todd.walters@bipc.com
`roger.lee@bipc.com
`mythili.markowski@bipc.com
`stephany.small@bipc.com
`
`
`
`
`
`
`
`
`
`
`12
`
`