Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 43
`Entered: September 27, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`
`____________
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`
`JUDGEMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`ORDER
`Dismissing Patent Owner’s Motion to Strike
`Dismissing Patent Owner’s Motion to Exclude Evidence
` 37 C.F.R. §§ 42.5, 42.64
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 43
`Entered: September 27, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`
`____________
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`
`JUDGEMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`ORDER
`Dismissing Patent Owner’s Motion to Strike
`Dismissing Patent Owner’s Motion to Exclude Evidence
` 37 C.F.R. §§ 42.5, 42.64
`
`
`
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`I. INTRODUCTION
`
`exocad GmbH, and exocad America, Inc. (“Petitioner”) filed a
`
`Petition (Paper 1, “Pet.”) requesting inter partes review of claims 1–30 of
`
`U.S. Patent No. 9,336,336 B2 (Ex. 1001, “the ’336 patent”). 3Shape A/S
`
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`On October 3, 2018, we entered our Decision on Institution (Paper 7, “Dec.”
`
`or “Decision”) instituting inter partes review of all challenged claims under
`
`all asserted grounds. Dec. 33.
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`
`(Paper 23, “Resp.”), Petitioner filed a Reply (Paper 26, “Reply”), and Patent
`
`Owner filed a Sur- Reply (Paper 31, “Sur-Reply”). To support its
`
`arguments, Petitioner relies on the testimony of Dr. Joseph L. Mundy (see
`
`Exs. 1003, 1023), while Patent Owner relies on testimony from Dr. Eli Saber
`
`(see Ex. 2001).
`
`Per our authorization, Patent Owner filed a motion to strike certain
`
`arguments and evidence in petitioner’s reply. Paper 29; Paper 30 (“Mot.
`
`Strike”). Petitioner filed an opposition to Patent Owner’s motion to strike
`
`(Paper 33, “Opp. Strike”).
`
`Additionally, Patent Owner filed a motion to exclude certain evidence
`
`in Petitioner’s reply. Paper 36 (“Mot. Exclude”). Petitioner filed an
`
`opposition to Patent Owner’s motion to exclude (Paper 37, “Opp. Exclude”)
`
`and Patent Owner filed a reply in support of the motion to exclude (Paper
`
`38, “Reply Exclude”).
`
`
`
`2
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`Oral argument was held on June 24, 2019 in Alexandria, Virginia, and
`
`a transcript of the hearing is included in the record. Paper 42 (“Tr.”).
`
`We have authority under 35 U.S.C. § 6. Petitioner bears the burden of
`
`proving unpatentability of the challenged claims, and the burden of
`
`persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
`
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
`
`must prove unpatentability by a preponderance of the evidence. See 35
`
`U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Final Written Decision is issued
`
`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. Having reviewed the
`
`arguments of the parties and the supporting evidence, we find that Petitioner
`
`has demonstrated by a preponderance of the evidence that all challenged
`
`claims 1–30 of the ’336 patent are unpatentable. Our determination is
`
`summarized in the table at the conclusion of this decision.
`
`
`
`A. Real Parties in Interest
`
`Petitioner identifies the following parties as real parties in interest:
`
`exocad GmbH, exocad America, Inc., Ivory GmbH, Ivory Holding GmbH,
`
`Ivory Global Holdings GmbH, CETP III Ivory SARL (“CETP” is Carlyle
`
`
`
`3
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`Europe Technology Partners”), CETP III Participations SARL, SICAR, and
`
`Carlyle Europe Technology Partners III, L.P. Pet. 1.1
`
`Patent Owner identifies only itself as a real party in interest. Paper 3.
`
`B. Related Matters
`
`The parties state that the ’336 patent is asserted in 3Shape A/S v.
`
`exocad GmbH, and exocad America, Inc., Case No. 1:17-cv-00239- ER-
`
`MPT (D. Del.). The ’336 patent was also the subject of a petition filed in
`
`IPR2018-00785. Pet. 1; Paper 3, 1. An inter partes review was not
`
`instituted in IPR2018-00785. Exocad GmbH v. 3Shape A/S, IPR2018-
`
`00785, Paper 8 (PTAB Oct. 3, 2018).
`
`
`
`C. The ’336 Patent
`
`The ’336 patent involves computer-implemented dental restoration
`
`design. Ex. 1001, 1:5–6 (“a method of visualizing and modeling a set of
`
`teeth for a patient”). The ’336 patent explains that dental restoration
`
`modeling combines facial imagery with a 3D model of the patient’s oral
`
`structure, to thereby allow visualization of the patient’s post-restoration
`
`appearance. Id. at 19:43–20:29. The 3D model is then usable for
`
`manufacturing the restoration. Id. at 20:26–29.
`
`
`1 Petitioner states “[n]one of the entities other than exocad GmbH and
`exocad America, Inc. meet the definition of a real-party-in-interest, but
`Petitioner nonetheless lists those additional entities as real-parties-in-interest
`in this matter.” Pet. 1, n. 1. Based on the complete record, we observe that
`there appear to be no substantive, dispositive, or procedural issues that rest
`on determining whether these listed entities are real-parties-in-interest.
`4
`
`
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`The ’336 patent acknowledges that “[v]isualization and modeling or
`
`design of teeth [were] known in the field of dental restorations” but
`
`distinguishes its method because it “may be performed faster than prior art
`
`methods.” Id. at 1:13–14, 3:38–39. Among the reasons given is that the
`
`’336 patent’s 2D facial imagery “is not superimposed or overlaid onto the
`
`3D virtual model for creating one representation with all data included” as is
`
`the case in the prior art, which “requires more time and exhaustive data
`
`processing.” Id. at 3:30–37. In particular, the ’336 patent explains that at
`
`least one 2D image of the patient’s facial features is arranged relative to the
`
`3D model in 3D virtual space yet the image and the model “remain as
`
`separate data representations which are not merged or fused together into
`
`one representation.” Id. at 3:25–28. Figures 3A and 3B, reproduced below,
`
`are illustrative.
`
`
`
`
`
`Figures 3A and 3B depict visualizing and arranging a 2D image and a
`
`3D model. The 3D model 302 and the 2D image 301 are depicted separately
`
`in Figure 3A and depicted aligned in Figure 3B. Id. at 20:54–21:3. The
`
`
`
`5
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`’336 patent explains that the teeth of the 2D image may be cut out or
`
`rendered transparent. Id. at Figs. 8, 11D, 11G, 11H and 23:23–35, 24:31–
`
`37, 24:60–25:3.
`
`D. Challenged Claims
`
`Petitioner challenges claims 1–30, which are all of the claims in the
`
`’336 patent. Of the challenged claims, claims 1 and 29 are independent.
`
`Claim 1 is reproduced below.
`
`1. A computer-implemented method of designing a dental
`restoration for a patient, wherein the method comprises:
`using a hardware processor to:
`provide one or more 2D images, where at least one
`of the one or more 2D images comprises at least one facial
`feature, wherein the at least one facial feature comprises
`lips;
`
`either virtually cut at least a part of teeth out of the
`at least one 2D image or render a part of the at least one
`2D image that includes teeth at least partly or wholly
`transparent;
`provide a 3D virtual model of at least part of an oral
`cavity of the patient;
`arrange the at least one 2D image relative to the 3D
`virtual model in a virtual 3D space such that the at least
`one 2D image and the 3D virtual model are aligned when
`viewed
`from a viewpoint and
`remain
`separate
`representations after being arranged, whereby the 3D
`virtual model and the at least one 2D image are both
`visualized in the 3D space; and
`design a restoration for the 3D virtual model, where
`the restoration is designed to fit the at least one facial
`feature of the at least one 2D image;
`
`
`
`6
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`wherein the at least one 2D image and the 3D virtual
`model are aligned by scaling, translating or rotating the at least
`one 2D image or the 3D virtual model relative to each other.
`
`Ex. 1001, 25:66–26:25.
`
`E. Evidence and Instituted Grounds
`
`We instituted an inter partes review on all of Petitioner’s requested
`
`grounds as more specifically shown below:
`
`Ground
`1
`
`2
`
`3
`
`Claim(s) Description2
`Anticipated under § 102 by Wiedmann3 (claims
`1–14, 16–
`20, and
`1–5, 7–11, 13, 14, 16–18, 22–24, and 27–30),
`22–30
`or Alternatively Obvious under § 103 over
`Wiedmann and Sachdeva4 (claims 1–14, 16–
`20, and 22–30)
`Obvious under § 103 based on Wiedmann,
`Sachdeva, and Lehmann5
`Obvious under § 103 based on Wiedmann,
`Sachdeva, and Seeger6
`
`15
`
`21
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’336
`patent has an effective filing date before the effective date of the applicable
`AIA amendments, we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and
`103.
`3 Wiedmann, Oliver, “According to the Laws of Harmony … to find the
`right tooth shape with the assistance of the computer,” Digital Dental
`News, 2nd Volume, April 2008 (Ex. 1007, “Wiedmann”).
`4 U.S. Patent No. 7,156,655 B2 to Sachdeva et al., issued January 2, 2007
`(Ex. 1005, “Sachdeva”).
`5 Lehmann, Thomas M., et al., “Survey: Interpolation Methods in Medical
`Image Processing,” IEEE Transactions on Medical Imaging, Vol. 18,
`No. 11, November 1999 (Ex. 1010, “Lehmann”).
`6 U.S. Patent Publication No. US 2002/0075389 A1 to Seeger, published
`
`
`
`7
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`Ground
`4
`
`5
`
`6
`
`7
`
`8
`
`
`
`1–14, 16–
`20, and
`22–30
`15
`
`Claim(s) Description2
`6–8
`Obvious under § 103 based on Wiedmann,
`Sachdeva, and MacDougald7
`Anticipated under § 102 by Sachdeva, or
`Alternatively Obvious under § 103 over
`Sachdeva and Kopelman8
`Obvious under § 103 based on Sachdeva,
`Kopelman, and Lehmann
`Obvious under § 103 based on Sachdeva,
`Kopelman, and Seeger
`Obvious under § 103 based on Sachdeva,
`Kopelman, and MacDougald
`
`21
`
`6–8
`
`II. ANALYSIS
`
`A. Claim Construction
`
`For petitions filed before November 13, 2018, we use the broadest
`
`reasonable interpretation in light of the specification to interpret the claims
`
`of a patent that will not expire before issuance of a final written decision.
`
`See 37 C.F.R. § 42.100(b) (2017) 9; Cuozzo Speed Techs., LLC v. Lee, 136
`
`
`June 20, 2002, (Ex. 1011, “Seeger”).
`7 U.S. Patent No. 6,568,936 B2 to MacDougald, issued May 27, 2003 (Ex.
`1009, “MacDougald”).
`8 U.S. Patent No. 6,845,175 B2 to Kopelman et al., issued January 18, 2005
`(Ex. 1008, “Kopelman”).
`9 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
`
`
`
`
`8
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`S.Ct. 2131, 2144–46 (2016). Consistent with the broadest reasonable
`
`construction standard, the challenged claims are presumed to be 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). We shall construe only terms
`
`that are in controversy and then only to the extent necessary to resolve the
`
`controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the
`
`context of an inter partes review).
`
`Petitioner proposes constructions for “2D image,” “3D virtual model
`
`of at least part of an oral cavity of the patient,” “virtual 3D space,” “remain
`
`separate representations after being arranged,” “designed to fit,” “section at
`
`least two or more teeth,” and “prepared tooth.” Pet. 7–11. Patent Owner
`
`proposes constructions for “of at least part of an oral cavity of the patient,”
`
`“arrange the at least one 2D image relative to the 3D virtual model in a
`
`virtual 3D space such that the at least one 2D image and the 3D virtual
`
`model are aligned when viewed from a viewpoint and remain separate
`
`representations after being arranged,” and “render a part of the at least one
`
`2D image that includes teeth at least partly or wholly transparent.” Resp. 4–
`
`8.
`
`1. “arrange the at least one 2D image relative to the 3D virtual model in a
`virtual 3D space such that the at least one 2D image and the 3D virtual
`
`
`
`9
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`model are aligned when viewed from a viewpoint and remain separate
`representations after being arranged”
`
`Petitioner contends the term “remain separate representations after
`
`being arranged” recited in independent claims 1 and 29 (required in all the
`
`challenged claims) means “the 2D image and the 3D virtual model remain in
`
`their respective formats and are not merged into a single representation.”
`
`Pet. 9; see Ex. 1001, 3:25–37 (“the 2D image and the 3D model are arranged
`
`and remain as separate data representations which are not merged or fused
`
`together into one representation”).
`
`Patent Owner contends Petitioner’s proposed construction does not
`
`account for this term in the context of the full claim limitation, which recites
`
`“arrange the at least one 2D image relative to the 3D virtual model in a
`
`virtual 3D space such that the at least one 2D image and the 3D virtual
`
`model are aligned when viewed from a viewpoint and remain separate
`
`representations after being arranged.” Resp. 6–7. Patent Owner argues that
`
`it is not enough to remain separate data representations but that “the 2D
`
`image and the 3D virtual model must remain separate in their respective
`
`formats after being arranged (after the 2D image and the 3D virtual model
`
`are aligned when viewed from a viewpoint).” Id. at 7. See Ex. 2001 ¶ 31.
`
`We are persuaded Patent Owner’s proposed construction is correct.
`
`Specifically, we determine that “arrange the at least one 2D image relative to
`
`the 3D virtual model in a virtual 3D space such that the at least one 2D
`
`image and the 3D virtual model are aligned when viewed from a viewpoint
`
`and remain separate representations after being arranged” means that the 2D
`
`image and the 3D virtual model must remain separate in their respective
`10
`
`
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`formats after the 2D image and the 3D virtual model are aligned when
`
`viewed from a viewpoint. Resp. 6–7. Our construction is consistent with
`
`the express language of the claims, which recites that “2D image and the 3D
`
`virtual model are aligned when viewed from a viewpoint and remain
`
`separate representations after being arranged.” Emphasis added.
`
`Our construction also is consistent with Patent Owner’s expert’s
`
`declaration testimony. Ex. 2001 ¶ 31. We find credible the testimony of
`
`Patent Owner’s expert, Dr. Saber, who testifies that
`
`[b]y reciting “such that”, the “arrange” limitation requires an
`arrangement of the 2D image and the 3D virtual model in which
`both: (1) the 2D image and the 3D virtual model are aligned when
`viewed from a viewpoint and (2) the 2D image and the 3D virtual
`model remain separate representations after being arranged, i.e.,
`in the aligned state.
`
`Ex. 2001 ¶ 31. This testimony takes into account the express language of
`
`the claim, which we agree must be considered in construing this limitation.
`
`In its Sur-reply, Patent Owner argues also that the construction of this
`
`term precludes the merging or fusing of the 2D image and the 3D virtual
`
`model after alignment. Sur-reply 3; Tr. 40: 3–6 (“MR. LEE: It remains [two
`
`representations] for all time. That’s the natural read of the claim, . . . [that]
`
`the claims require that the 2D image and 3D virtual model remain separate
`
`representations after being arranged.”). We understand Patent Owner’s
`
`position to be that the 2D image and 3D virtual model must remain separate
`
`indefinitely after being aligned when viewed from a viewpoint. Id.; Tr. 41:
`
`4–9 (“MR. LEE: It is indefinite. As Your Honor – as you said, it is
`
`indefinite . . . the claims require that the 2D image and 3D virtual model
`
`
`
`11
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`remain separate representations after being arranged.”). However, the
`
`express language of the claim does not dictate any temporal limit or duration
`
`is required for how long the 2D image and the 3D virtual model must remain
`
`separate representations after being arranged. Further, the Specification
`
`teaches that it is an advantage to keep the 2D image and the 3D model
`
`separate, by not merging or fusing the two into a single representation.
`
`Ex. 1001, 3:25–31. Nonetheless, even here, the Specification does not go so
`
`far as requiring that the 2D image and the 3D model remain separate
`
`indefinitely. In fact, no temporal limit or requirement is described in the
`
`’336 patent. Certainly, the ’336 patent does not describe the separation as
`
`indefinite. Thus, we are not persuaded that “remain separate representations
`
`after being arranged” requires that the data representations remain separate
`
`indefinitely after being arranged. Similarly, we are not persuaded that
`
`“remain separate representations after being arranged” precludes
`
`momentarily remaining separate data representations after being arranged.
`
`In short, our construction does not place a temporal limitation on how long
`
`the 2D image and the 3D virtual model remain separate. Again, this
`
`construction is consistent with both the Specification (Ex. 1001, 3:25–37)
`
`and the language of the claims (id. at 26:12–18, 28:28–34), neither of which
`
`specify a minimum (or any specific) length of time that the 2D image and
`
`the 3D virtual model must remain separate data representations after being
`
`arranged.
`
`
`
`12
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`2. Other Terms
`
`We do not find it necessary to construe any other terms explicitly. See
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (“[O]nly those terms need be construed that are in controversy, and
`
`only to the extent necessary to resolve the controversy.”).
`
`B. Principles of Law
`
`1. Anticipation
`
`“A claim is anticipated only if each and every element as set forth in
`
`the claim is found, either expressly or inherently described, in a single prior
`
`art reference.” Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631
`
`(Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of anticipation is prior
`
`invention, the prior art reference—in order to anticipate under 35 U.S.C.
`
`§ 102—must not only disclose all elements of the claim within the four
`
`corners of the document, but must also disclose those elements ‘arranged as
`
`in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
`
`(Fed. Cir. 2008). Whether a reference anticipates is assessed from the
`
`perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total
`
`Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he
`
`dispositive question regarding anticipation [i]s whether one skilled in the art
`
`would reasonably understand or infer from the [prior art reference’s]
`
`teaching’ that every claim element was disclosed in that single reference.”).
`
`
`
`13
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`2. Obviousness
`
`In Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Court
`
`set out a framework for assessing obviousness under § 103 that requires
`
`consideration of four factors: (1) the “level of ordinary skill in the pertinent
`
`art,” (2) the “scope and content of the prior art,” (3) the “differences between
`
`the prior art and the claims at issue,” and (4) “secondary considerations” of
`
`non-obviousness such as “commercial success, long-felt but unsolved needs,
`
`failure of others, etc.” Id. at 17. “While the sequence of these questions
`
`might be reordered in any particular case,” KSR Int’l Co. v. Teleflex Inc.,
`
`550 U.S. 398, 407 (2007), the Federal Circuit has “repeatedly emphasized
`
`that an obviousness inquiry requires examination of all four Graham factors
`
`and that an obviousness determination can be made only after consideration
`
`of each factor.” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir.
`
`2016).
`
`We note that, with respect to the fourth Graham factor, the record
`
`does not include any argument or evidence directed to secondary
`
`considerations of nonobviousness. Therefore, the analysis below addresses
`
`the first three Graham factors.
`
`C. The Level of Ordinary Skill
`
`In determining the level of skill in the art, we consider the type of
`
`problems encountered in the art, the prior art solutions to those problems, the
`
`rapidity with which innovations are made, the sophistication of the
`
`technology, and the educational level of active workers in the field. Custom
`
`
`
`14
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir.
`
`1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).
`
`Petitioner relies on the testimony of Dr. Joseph L. Mundy, who
`
`testifies as follows:
`
`a person of ordinary skill in the art of software systems, including
`digital dental systems, is generally one who has a Bachelor’s
`degree in electrical engineering or computer science, or it could
`be someone in a related discipline who also has a few years of
`relevant academic, research or industry work experience. Such
`a person would also typically have the ability to learn
`information about the needs of the users of dental design
`software (e.g., dentists, dental lab clinicians, etc.), including such
`information coming from others who have interacted or worked
`with such users of dental design software or have relevant
`experience in the dental design software industry. Often
`software is developed in teams, with not every individual on the
`team being a computer programmer.
`
`Ex. 1002 ¶ 48; see id. ¶¶ 47–54; Pet. 7.
`
`Patent Owner relies on the testimony of Dr. Saber, who testifies
`
`similarly. See Ex. 2001 ¶ 26, Resp. 4. Specifically, Patent Owner asserts
`
`that
`
`[a] person of ordinary skill in the art (“POSITA”) would have a
`bachelor’s degree
`in electrical engineering, computer
`engineering, computer science, or an equivalent field, as well as
`at least one or two years of industry or research experience with
`computer vision/graphics making use of three-dimensional
`virtual models. Such a person would also typically have the
`ability to learn information about the needs of the users of dental
`or biomedical design software.
`
`Resp. 4.
`
`
`
`15
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`We determine that no material dispute exists over the level of ordinary
`
`skill, and the record prior art references support Petitioner’s proposed level
`
`of ordinary skill. Based on the evidence of record, including the types of
`
`problems and solutions described in the ’336 patent and the asserted prior
`
`art, we agree with and adopt Petitioner’s definition of the level of ordinary
`
`skill in the art. Further, we would reach the same findings and
`
`determinations under either party’s definition of the level of ordinary skill in
`
`the art.
`
`D. Anticipation Challenge Based on Sachdeva
`
`Petitioner asserts that Sachdeva anticipates claims 1–14, 16–20, and
`
`22–30. Pet. 16–48, 55–79.10 Patent Owner contends that Sachdeva does not
`
`anticipate these claims because it does not describe “arrange the at least one
`
`2D image relative to the 3D virtual model in a virtual 3D space such that the
`
`at least one 2D image and the 3D virtual model are aligned when viewed
`
`from a viewpoint and remain separate representations after being arranged”
`
`and “either virtually cut[ting] at least a part of teeth out of the at least one
`
`2D image or render[ing] a part of the at least one 2D image that includes
`
`teeth at least partly or wholly transparent,” as recited in independent claims
`
`1 and 29. Resp. 28–47. Patent Owner disputes that Sachdeva anticipates the
`
`
`10 Petitioner’s mapping of the claims to Sachdeva in the claim charts of
`pages 55–79 of the Petition do not specifically refer to Sachdeva but rather
`refer to the claim chart Petitioner provides for mapping the claims to the
`combination of Wiedmann and Sachdeva at pages 16–48. Our analysis
`references the claim chart mapping the claims to the combination of
`Wiedmann and Sachdeva to avoid confusion.
`16
`
`
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`dependent claims for the same reasons. Id. at 46. For claim 6, which recites
`
`“the first 3D virtual model comprises at least one prepared tooth,” Patent
`
`Owner argues that “Sachdeva has no mention of prepared teeth.” Id. at 46.
`
`Patent Owner argues claims 7 and 8 on the additional basis that they depend
`
`from claim 6. Id. at 47. For claim 9, which recites “the hardware processor
`
`is used to virtually cut at least a part of teeth out of the at least one 2D
`
`image,” Patent Owner relies on the same arguments provided for claim 1.
`
`Id. For the remaining challenged claims 2–5, 10–14, 16–20, and 22–28, and
`
`30, Patent Owner does not present any arguments separate from those
`
`discussed above. See generally Resp.
`
`1. Sachdeva (Ex. 1005)
`
`Sachdeva describes “[a] method and workstation for evaluation of an
`
`orthodontic treatment plan for a patient.” Ex. 1005, Abst. It describes using
`
`two data sets, one of which may be 2D images of the patient’s face and head,
`
`and the other may be 3D image information of the patient’s teeth. Id. at
`
`6:46–50. The first data set is used to create a model of the patient’s face,
`
`which is aligned in virtual 3D space with a 3D tooth model based on the
`
`second data set. Id. at 6:14–7:44. This arrangement is then used to design a
`
`dental restoration for the patient. Id. at 7:45–57. The arrangement is
`
`depicted in Figure 6, reproduced below.
`
`
`
`17
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`
`
`Figure 6 depicts a 3D virtual environment in which a “3D morphable
`
`model” 102 of the patient’s face is shown in one coordinate system on the
`
`left side of the display and a 3D model of the patient’s teeth is shown in a
`
`3D coordinate system on the right side of the screen. Id. at 14:26–31. Icons
`
`35 “allow the user to position the tooth model 104 relative to the morphable
`
`model 102 in order to combine the two in a common coordinate system and
`
`construct a composite model.” Id. Tools allow the user to “hide one or
`
`more image data in order to study certain features.” Id. at 15:26–27; see id.
`
`at 30:8–12 (“[t]he screen display 622 includes a plurality of icons 624 which
`
`are used for hiding and displaying various aspects of the virtual patient
`
`model, soft tissue, occlusal planes, and other features of the software.”).
`
`
`
`18
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`2. Analysis
`
`Petitioner provides detailed claim charts mapping the elements of
`
`claims 1–14, 16–20, and 22–30 to the teachings of Sachdeva, and refers to
`
`supporting testimony by Dr. Mundy. Pet. 16–48; see Ex. 1002 ¶¶ 466–570.
`
`Patent Owner disputes Petitioner’s case. A central thesis of Patent
`
`Owner’s arguments is that the “’336 Patent distinguishes its technique from
`
`prior art techniques in which the 2D image and 3D model are merged or
`
`combined into one composite representation.” Resp. 3; Ex. 2001 ¶ 28
`
`(citing Ex. 1001, 3:25–37) (“By keeping the data representations as separate
`
`representations, time is saved and data processing time and capacity is
`
`reduced. Thus the 2D image is not superimposed or overlaid onto the 3D
`
`virtual model for creating one representation with all data included.”); see
`
`Resp. 34–36 (“Unlike the claimed approach of visualizing ‘separate
`
`representations’ in an aligned state, Sachdeva employs the conventional
`
`approach of merging the images into one representation with all data
`
`included. Ex. 2001 at ¶ 68.”).
`
`Having framed Petitioner’s and Patent Owner’s arguments broadly,
`
`we now turn to the specific contentions of Petitioner and Patent Owner with
`
`respect to anticipation by Sachdeva.
`
`(a) Claims 1 and 29
`
`i.
`“[a] computer-implemented method of designing a
`dental restoration for a patient . . . provid[ing] one or more 2D
`images, where at least one of the one or more 2D images
`comprises at least one facial feature, wherein the at least one
`
`
`
`19
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`facial feature comprises lips . . . provid[ing] a 3D virtual model
`of at least part of an oral cavity of the patient”
`
`Claim 1 is generally directed to “[a] computer-implemented method
`
`of designing a dental restoration for a patient” and includes using a hardware
`
`processor to perform the method. Ex. 1001, 25:66–26:25. Claim 29 recites
`
`a system having a hardware processor configured to perform method steps
`
`that are similar to those of claim 1. Id. at 28:15–41. Below, we discuss
`
`claim 1, which is representative of independent claim 29.
`
`Claim 1 also recites “provid[ing] one or more 2D images, where at
`
`least one of the one or more 2D images comprises at least one facial feature,
`
`wherein the at least one facial feature comprises lips” and “provid[ing] a 3D
`
`virtual model of at least part of an oral cavity of the patient.”
`
`Petitioner maps these limitations to, inter alia, Sachdeva’s description
`
`that it “relates to the field of computerized techniques for orthodontic
`
`treatment planning of human patients” (Ex. 1005, 1:18–20) and that its
`
`system “includes a general-purpose computer system having a processor”
`
`(id. at 6:25–26). Petitioner argues that Sachdeva describes that the system
`
`includes memory that “stores two or more sets of digital data representing
`
`patient craniofacial image information.” Pet. 16–25. According to
`
`Petitioner, Sachdeva describes “a representative and non-limiting example of
`
`the data sets, [wherein] the first data set 24 could be a set of two dimensional
`
`color photographs of the face and head of the patient . . . and the second data
`
`set is three-dimensional image information of the patient’s teeth” (id. at
`
`6:45–50), which Petitioner references for the foregoing limitations. Pet. 23–
`
`
`
`20
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`25. Petitioner’s contentions are supported by the testimony of Dr. Mundy.
`
`Pet. 16–20, 23–25 (citing Ex. 1002 ¶¶ 298, 300, 302–07, 310, 311, 319–22).
`
`Patent Owner does not dispute that Sachdeva describes these
`
`limitations. See generally Resp. 28–46; Sur-Reply 5–20. Rather, Patent
`
`Owner contends generally that Sachdeva’s 2D images are transformed into a
`
`3D model for further operations. Resp. 32; Sur-Reply 5–7 (citing Ex. 2001
`
`¶¶ 62–67). Patent Owner presents three main arguments for this position.
`
`First, Patent Owner contends that Sachdeva explicitly discloses that in
`
`Figure 6, the display shows a 3D morphable model 102 of the patient. Resp.
`
`29 (citing Ex.1005, 7:11–14, 7:38–39, 7:47–48, 7:55–56, 13:15–16, 14:15–
`
`17; Ex. 2001 ¶ 62). Second, Patent Owner argues that Sachdeva’s 2D color
`
`pictures of the face are taken and converted automatically to a textured 3D
`
`model. Resp. 30 (citing Ex. 1005, 11:4–7, 14:18–20; Ex. 2001 ¶ 63). Third,
`
`Patent Owner asserts that “Blan[t]z et al., A Morphable Model for The
`
`Synthesis of 3D Faces, Computer Graphics Proceedings SIGGRAPH ‘99
`
`(August 1999) (Ex. 2003 (“Blantz”))” shows that the term “morphable
`
`model” in Sachdeva refers to a 3D morphing function or a 3D model formed
`
`by a morphing function. Resp. 30 (citing Ex. 2003, 1; Ex. 2001 ¶ 64).
`
`Although Patent Owner acknowledges that Sachdeva describes “the use of ‘a
`
`set of two dimensional color photographs of the face and head of the
`
`patient’” (Resp. 32 (quoting Ex. 1005, 6:45–48)), Patent Owner argues that
`
`“Sachdeva further discloses that the set of 2D color face photographs ‘are
`
`combined in the computer to form a 3D morphable face model’” (id.
`
`(quoting Ex. 1005, 7:29–35)) and that “[i]t is this 3D morphable face model,
`
`
`
`21
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`not the set of 2D color face photographs, that is co
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
