throbber
Filed on behalf of Petitioners
`By: Todd R. Walters, Esq. (todd.walters@bipc.com)
`Roger H. Lee, Esq. (roger.lee@bipc.com)
`Andrew R. Cheslock, Esq. (andrew.cheslock@bipc.com)
`Mythili Markowski, Ph.D., Esq. (mythili.markowski@bipc.com)
`Stephany G. Small, Ph.D. (stephany.small@bipc.com)
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314
`Main Telephone (703) 836-6620
`Main Facsimile (703) 836-2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`3SHAPE A/S and 3SHAPE INC.
`Petitioners
`
`v.
`
`ALIGN TECHNOLOGY, INC.
`Patent Owner
`__________________
`
`Case No. IPR2019-00156
`Patent 8,675,207
`__________________
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`

`

`
`
`TABLE OF CONTENTS
`
`Case No. IPR2019-00156
`
`
`
`
`
`
`
`B.
`
`C.
`
`
`Page
`INTRODUCTION ........................................................................................... 1
`ARGUMENT ................................................................................................... 2
`A.
`Identification of Portions of Petitioners’ Reply That are the
`Same Across Multiple Proceedings ...................................................... 2
`PO’s Arguments Were Already Rejected in the Related ITC
`Investigation .......................................................................................... 2
`PO’s Construction of “a handheld device comprising ... (c) a
`processor configured to associate the depth data with the color
`image data” Is Erroneous ...................................................................... 8
`1.
`The Plain and Unambiguous Language of the Claim
`Means the Hand-held Device Physically Incorporates the
`Processor ..................................................................................... 8
`PO’s Construction For the Disputed Claim Limitation
`Contradicts the Clear Disclosure in the Specification .............. 10
`The Prosecution History Provides No Support for PO’s
`Construction .............................................................................. 12
`PO’s Extrinsic Evidence Should Be Given Little Weight ........ 13
`PO’s Newly Defined Level of Ordinary Skill in the Art
`Does Not Inform PO’s Claim Construction .............................. 15
`a.
`PO Fails to Cite to Legal Authority for Alternative
`POSITA Qualifications ................................................... 16
`PO’s New Characterization of a POSITA is
`Inconsistent With Its Previous Positions ........................ 16
`PO’s Expert Disagrees With the New
`Characterization of a POSITA and Adopts
`Petitioners’ Definition .................................................... 17
`
`2.
`
`3.
`
`4.
`5.
`
`b.
`
`c.
`
`i
`
`

`

`Case No. IPR2019-00156
`
`d.
`
`2.
`
`3.
`
`PO’s Experts Fail as Experts Under PO’s Proffered
`Qualifications .................................................................. 17
`D. Ancestral Applications Lack Written Description Support for
`the Claims ............................................................................................ 18
`1.
`PO Fails to Demonstrate That a POSITA Would
`Conclude From the Ancestral Applications That the
`Inventor was in Possession of the Claimed Invention .............. 18
`PO Incorrectly Relies On an Obviousness Standard
`Instead Of the Legal Standard Applicable When
`Determining Whether A Claim Has Adequate Written
`Description Support .................................................................. 20
`PO’s Other Legal Arguments are Equally Inapplicable to
`the Written Description ............................................................. 22
`PO’s Purported Supporting Embodiment is Nonsensical ......... 24
`4.
`Babayoff is Prior Art Due to the Lack of Written Description ........... 25
`PO Admits That Claims 1-21 Were Obvious Prior to April 23,
`2013 ................................................................................................... 26
` CONCLUSION .............................................................................................. 27
`APPENDIX A - LIST OF EXHIBITS
`CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24
`CERTIFICATE OF FILING AND SERVICE
`
`
`E.
`F.
`
`ii
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`

`

`Case No. IPR2019-00156
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Chef America, Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004) .......................................................................... 12
`Droplets, Inc. v. E*TRADE Bank,
`887 F.3d 1309, 126 U.S.P.Q.2d 1317 (Fed. Cir. Apr. 19. 2018) ........................ 26
`Genentech, Inc. v. Chiron Corp.,
`112 F.3d 495, 42 U.S.P.Q.2d 1608 (Fed. Cir. 1997) ............................................ 9
`Lockwood v. American Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .......................................................................... 21
`
`Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v.
`Eli Lilly & Co.,
`849 F.3d 1049 (Fed. Cir. 2017) .......................................................................... 22
`In re NTP, Inc.,
`654 F.3d 1268 (Fed. Cir. 2011) ............................................................................ 7
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 13
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .......................................................................... 25
`Research Corp. Techs., Inc. v. Microsoft Corp.,
`627 F.3d 859 (Fed. Cir. 2010) ............................................................................ 24
`Statutes
`35 U.S.C. § 112 .................................................................................................... 5, 26
`Rules
`M.P.E.P. 2111.03 ....................................................................................................... 9
`
`
`iii
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`

`Case No. IPR2019-00156
`
`
`
`INTRODUCTION
`Patent Owner (“PO”) does not dispute that Claims 1-21 of U.S. Patent No.
`
`8,675,207 would have been obvious in view of any of the art combinations:
`
`Babayoff in view of Petersen (Ground 1); Babayoff in view of Fisker (Ground 2);
`
`Babayoff in view of Engelhardt (Ground 3). Instead, PO asserts that Babayoff is
`
`not prior art. However, PO’s assertions are unsupported by fact or law. The ALJ
`
`in the parallel ITC proceeding has already ruled against PO on the issues addressed
`
`herein. Here, as found in the ITC, PO’s proposed claim construction of “a hand-
`
`held device comprising…a processor configured to associate the depth data with
`
`the color image data” (“disputed claim limitation”), is contrary to the plain and
`
`unambiguous language of the claims in light of the specification. The claims
`
`require the part of the system that is held in the hand to include a processor, and
`
`PO’s ancestral applications fail to disclose such a hand-held device. PO’s
`
`construction based on its new characterization of a POSITA (which is inconsistent
`
`with numerous other characterizations proffered by PO) departs from all accepted
`
`standards of claim construction. PO’s incorrect reliance on obviousness and other
`
`irrelevant legal arguments departs from all accepted standards of written
`
`description. PO, here, like in the ITC, simply fails to show entitlement to an
`
`effective filing date prior to Babayoff’s publication, and the Board should find the
`
`claims unpatentable over the asserted prior art.
`
`1
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`Case No. IPR2019-00156
`
` ARGUMENT
`Identification of Portions of Petitioners’ Reply That are the Same
`A.
`Across Multiple Proceedings1
`For the purpose of lessening the burden on the Board, Petitioners identify
`
`Sections II.A to II.D as being the same in the Petitioners’ Reply for each of
`
`IPR2019-00154, IPR2019-00155, and IPR2019-00156 (“related IPRs”) except for
`
`citations to the respective papers, patents, and applications for each of the related
`
`IPRs. Additionally, for the purpose of lessening the burden on the Board,
`
`Petitioners refer to U.S. Patent No. 8,363,228 (“the ’228 patent”) (Ex.1103), U.S.
`
`Patent No. 8,451,456 (“the ’456 patent”) (Ex.1107), and U.S. Patent No. 8,675,207
`
`(“the ’207 patent”) (Ex.1108) as “the color scanning patents,” herein.
`
`B.
`
`PO’s Arguments Were Already Rejected in the Related ITC
`Investigation
`Claims of the color scanning patents were already determined to be
`
`unpatentable over Babayoff in view of Engelhardt (Ground 3) and invalid for
`
`1 In the Order Denying PO’s Request for Consolidation of IPR2019-00154, -00155,
`
`and -00156, the Board stated that “the parties are encouraged to identify the
`
`portions of their respective brief that are the same across multiple proceedings [and
`
`a]ny such identifications are exempt from the applicable word count limit.” Paper
`
`15, p.3.
`
`2
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`Case No. IPR2019-00156
`
`failing to meet the written description requirement in the related ITC investigation
`
`(In the Matter of Certain Color Intraoral Scanners and Related Hardware and
`
`Software, INV.NO.337-TA-1091). These determinations were issued on March 1,
`
`2019 in the final Initial Determination and were affirmed on November 22, 2019 in
`
`a Notice indicating the termination of the ITC investigation (“Notice”). Exs.2015,
`
`1112, respectively.
`
`First, regarding the relationship of the processor to the hand-held device, the
`
`ALJ agrees with Petitioners.
`
`I note that the processor of element [4] must be part of the
`handheld device recited as element [1]. … To be clear, element [1],
`the hand-held device is comprised of elements [2]-[4]. That means the
`hand-held device must, at a minimum, have all three of those
`elements, including “a processor configured to associate the depth
`data with the color image data.” … [O]nly “a processor configured to
`associate the depth data with the color image data” that is part of the
`hand-held device will satisfy element [4].
`
`Ex.2015, pp.87-88 (emphasis added); see also pp.98-101.
`
`The ALJ rejects PO’s argument that a computer coupled to the hand-held
`
`device satisfies this disputed claim limitation.
`
`Align’s argument goes astray by suggesting that an additional
`unrecited element, such as a processor in a personal computer that is
`not part of the hand-held device, can satisfy the explicit requirement
`
`3
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`

`Case No. IPR2019-00156
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`in the claim for a hand-held device with a processor as one of its
`components.
`
`Id., p.99.
`
`I reject that suggestion. Element [1] of claim 1 is a “handheld device
`comprising: ...” the processor element [3]. A computer that is not
`part of the handheld device does not satisfy the processor element
`[3] of claim 1.
`
`Id., p.54,fn6 (emphasis added); see also p.99 (“Align cites no legal support for
`
`such an aberrant interpretation of claim 1, and I am aware of none that would
`
`provide such support”).
`
`Second, the ALJ agrees with Petitioners that there is no written description
`
`support for the disputed claim limitation in either the non-claim portions of the
`
`color scanning patents or in the ancestral applications.2 The Notice confirms this
`
`determination. Ex.1112, p.2.
`
`I find, as a matter of fact, that a person of ordinary skill in the art
`would not conclude from the four corners of the ’228 patent that
`its inventor actually possessed the invention claimed in claim 1.
`Particularly, I do not find any disclosure of the “hand-held device
`comprising ... a processor” in that claim. Accordingly, I find that
`
`2 The ALJ agrees with Petitioners that ancestral applications of the ’207 patent lack
`
`written description support. Ex.2015, p.106.
`
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`Case No. IPR2019-00156
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`3Shape has established, by clear and convincing evidence, that claim
`1 of the ’228 patent is invalid for failure to comply with the written
`description requirement of § 112, ¶1.
`
`Ex.2015, p.104 (emphasis added); see also pp.105, 106.
`
`The ALJ agrees with Petitioners that the single disclosure of “hand-held
`
`device” in the non-claim portions of the color scanning patents and in the ancestral
`
`applications fails to include the processor as a component.
`
`[A]s a factual matter, it is true that there is only one reference to a
`hand-held device [citing to the ’228 patent at 24:48-54 and t]his
`passage clearly discloses a collection of components that the patentee
`contemplated as part of a hand-held device [and a] processor is not
`included among the collection of components. Accordingly, I find
`that the text of the specification does not provide support for a hand-
`held device with a processor as one of its components.
`
`Ex.2015, p.100.
`
`The ALJ agrees with the Petitioners that the figures indicate that the
`
`processor is physically separate from other system components.
`
`Nothing in this description suggests that the processor is a component
`of the optical device, and in fact, the distinct groupings of the
`components in the figures tend to suggest the opposite, that the
`disclosed processor, which appears to be a personal computer, is not a
`component of the optical device. Given that the optical device
`includes most of the components described as being within a unitary
`
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`Case No. IPR2019-00156
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`hand-held device, [citing to the ’228 patent] at 24:48-54, I find that
`figures 4A and 4B, along with their associated descriptions in the
`specification, tend to show that the patentee did not contemplate
`including a processor among the components of the hand-held
`device. Those figures tend to indicate that the patentee possessed
`an invention where the processor was a separate, general purpose,
`personal computer.
`
`Id., p.102 (emphasis added).
`
`Nonetheless, [Figure 1] still makes clear that the processor 24, is not a
`component of the optical device. Contrary to Align’s assertion,
`while this figure shows that the processor 24 is coupled to detector
`optics 60, nothing here suggests that the image processor would be
`included in a hand-held variant of optical device 22.
`
`Id., p.103 (emphasis added).
`
`I also do not agree with Align’s implied argument that all of the
`elements in figure 1 must be within the hand-held device because
`some of them are. Figure 1 is not a diagrammatic representation of
`the hand-held device; it is an illustration of “the main elements of
`preferred embodiments of the invention.” [citing to the ’228 patent]
`12:12-13.
`
`Id., p.104.
`
`Third, the ALJ agrees with Petitioners that the color scanning patents are not
`
`entitled to a priority date prior to their filing dates and agrees that Babayoff is prior
`
`art to the claims of the color scanning patents.
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`Case No. IPR2019-00156
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`I agree with 3Shape that the only written description support for claim
`l of the ’207 patent is found in the claim itself. Accordingly, claim 1
`is not entitled to claim priority back to June 17, 2004, because the
`parent applications and patents coming before the ’207 patent
`lack written description support for the “hand-held device
`comprising ... a processor” limitation in claim 1. See In re NTP,
`Inc., 654 F.3d 1268, 1276-77 (Fed. Cir. 2011). Claim 1 of the ’207
`patent is only entitled to a priority date of April 13, 2013, which is the
`filing date of the ’207 patent, based on the fact that the "hand-held
`device comprising ... a processor" limitation was included in original
`claims filed on that date. See id. As such, Babayoff ’739, which has
`a publication date of January 5, 2006, is prior art to claim 1 of the
`’207 patent.
`
`Id., p.106 (emphasis added).
`
`Finally, the ALJ agrees with Petitioners that claims of the color
`
`scanning patents are obvious in view of the combination of Babayoff and
`
`Engelhardt (Ground 3). The Notice confirms this determination. Ex.1112,
`
`p.2 (“the asserted claim of the ’207 patent is invalid as obvious.”).3
`
`3 The ITC did not specifically address obviousness in view of Babayoff and
`
`Engelhardt for all claims of the color scanning patents. However, the reasons for
`
`finding Claim 1 of the ’207 patent invalid as obvious, directly apply to remaining
`
`claims.
`
`7
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`Case No. IPR2019-00156
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`The evidence before me shows that all of the limitations of claim 1 of
`the ’207 patent except the hand-held processor limitation are present
`in Babayoff ’739, and Engelhardt, which also deals with intraoral
`scanning of teeth provides an explicit motivation to modify the
`processor of Babayoff ’739 to fit on the hand-held device disclosed
`therein. Accordingly, I find that 3Shape has established, by clear and
`convincing evidence, that claim 1 of the [’207] patent is invalid as
`obvious in view of the combination of Babayoff ’739 and Engelhardt.
`
`Ex.2015, pp.108-109.
`
`
`
`For at least the reasons stated above, Claims 1-21 of the ’207 Patent should
`
`be found unpatentable over the prior art.
`
`C.
`
`PO’s Construction of “a handheld device comprising ... (c) a
`processor configured to associate the depth data with the color
`image data” Is Erroneous
`Here, like in the ITC, PO argues that the claimed “hand-held device” does
`
`not require physically incorporating the claimed “processor” into a unitary device.
`
`POR, p.19. PO is wrong because the plain language of the claims dictates
`
`otherwise, the specification states otherwise, there is no mention of a special
`
`definition of the hand-held device in the file history, and there is no extrinsic
`
`evidence that outweighs the clear language of the claims.
`
`1.
`
`The Plain and Unambiguous Language of the Claim Means
`the Hand-held Device Physically Incorporates the Processor
`PO argues that the disputed claim limitation “refer[s] to a system where the
`
`processor is included as a part of (e.g., communicatively coupled to) a hand-held
`8
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`

`Case No. IPR2019-00156
`
`device,” and “is not limited to a handheld device with a physically integrated
`
`processor.” POR, pp.2-3. PO further argues that “hand-held device” means
`
`“simply a device that is operable by hand, irrespective of where the individual
`
`components comprising the device are physically located.” POR, p.19; see also
`
`POR, pp.2, 10. PO further argues that “nothing in the claim language itself
`
`requires the processor to be physically incorporated into a hand-held device.” POR,
`
`p.23. PO further argues that the “challenged claim itself … imposes no restriction
`
`at all on the physical characteristics of the claimed ‘hand-held’ device.” POR, p.21.
`
`All of these arguments are simply wrong.
`
`The plain language of Claim 1 is clear. The hand-held device must, at a
`
`minimum, include each of “(a) a scanning system … (b) an imaging system … and
`
`(c) a processor.” Ex.1001, 26:19-35 (emphasis added). The transitional term
`
`“comprising” is synonymous with “including,” “containing,” or “characterized by”
`
`and has been consistently interpreted as “a term of art used in claim language
`
`which means that the named elements are essential, but other elements may be
`
`added and still form a construct within the scope of the claim” Genentech, Inc. v.
`
`Chiron Corp., 112 F.3d 495, 501, 42 U.S.P.Q.2d 1608, 1613 (Fed. Cir. 1997)
`
`(emphasis added); M.P.E.P. 2111.03.
`
`PO is wrong asserting that the claims are not limited to a hand-held device
`
`with a physically integrated processor. A hand-held device comprising a processor
`
`9
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`

`Case No. IPR2019-00156
`
`means that the processor must be part of the hand-held device regardless of
`
`whether the system includes other components. Petition, pp.29-30. That is, “only
`
`‘a processor configured to associate the depth data with the color image data’ that
`
`is part of the hand-held device will satisfy” Claim 1. Supra, §II.B; Ex.2015, p.88.
`
`Here, like in the ITC, PO cites no legal support for such an aberrant interpretation
`
`of Claim 1. Moreover, PO admits that “[t]he only express requirement on the
`
`processor in the claim is that it be configured ‘to associate the depth data with the
`
`color image data,’ and that it be part of a ‘hand-held device.’” POR, p.23
`
`(emphasis added).
`
`2.
`
`PO’s Construction For the Disputed Claim Limitation
`Contradicts the Clear Disclosure in the Specification
`PO argues that the ’228 patent specification provides no support for
`
`Petitioners’ too-narrow construction. POR, pp.23-29. To the contrary, neither
`
`the ’228 patent specification nor the ’207 patent specification provide support for
`
`PO’s aberrant construction.
`
`The specification clearly discloses that the hand-held device is a unitary
`
`device. Petition, pp.17-18. The color scanning patents recite “hand-held device”
`
`in just one location. Ex.1001, 25:8-14 (“[t]he endoscope 46, the illumination unit
`
`31, the main optics 41, color illumination 71 and tri-color sequence generator are
`
`preferably included together in a unitary device, typically a hand-held device.”)
`
`(emphasis added); see also Ex.2015, p.100 (“as a factual matter, it is true that there
`
`10
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`

`Case No. IPR2019-00156
`
`is only one reference to a hand-held device”). This disclosure unambiguously
`
`means that a hand-held device is a typical species of a unitary device (the genus).
`
`See, POR, p.26 (noting that patentees used “‘unitary device’ to mean that the listed
`
`components are integrally part of the same structure.”).
`
`PO argues that “unitary device” is narrower than “hand-held device” while
`
`relying upon a typographical error in the Petition. POR, pp.20, 23-27; Petition,
`
`p.30. PO is wrong because a species (hand-held device) is necessarily narrower
`
`than a genus (unitary device) and this understanding is consistent with Petitioners’
`
`construction, irrespective of a typographical error.
`
`PO repeatedly conflates “device,” “device 100,” and “system” with “hand-
`
`held device.” POR, pp.3, 11-13, 28-29, 35, 47-51. However, “device,” “device
`
`100,” and “system” are not synonymous with “hand-held device.” As indicated
`
`above, the specification discloses a collection of components as part of the hand-
`
`held device wherein certain components of device 100 or the system are not
`
`included among that collection of components (e.g., processor configured to
`
`associate the depth data with the color image data). Ex.1001, 25:8-14, see also
`
`Ex.2015, p.100. Thus, hand-held device is a component of “system” or “device
`
`100.”
`
`Had patentee wanted to require a system (or device) comprising (a) a
`
`processor and (b) a hand-held device, wherein the hand-held device comprises (1)
`
`11
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`

`Case No. IPR2019-00156
`
`a scanning system and (2) an imaging system, then the patentee could and should
`
`have used such claim language. It is erroneous to conflate the terms, and have the
`
`claimed ‘hand-held device’ mean the same thing as a system or device or device
`
`100 as described in the color scanning patents. Compare to POR, pp.24-25. Chef
`
`America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (“in
`
`accord with our settled practice we construe the claim as written, not as the
`
`patentees wish they had written it.”)
`
`Referring to figures within the patent, PO argues that it is rare that a claim
`
`construction will exclude a preferred embodiment. POR, pp.28-29. As discussed
`
`below, although the figures provide no description suggesting a hand-held device
`
`comprising a processor, this does not negate Petitioner’s construction based upon
`
`the plain language of the claims and the clear disclosure of the specification.
`
`3.
`
`The Prosecution History Provides No Support for PO’s
`Construction
`PO asserts that the file history provides no support for Petitioners’
`
`construction. POR, pp.29-30. PO is wrong. As acknowledged by PO, the claims
`
`were amended in the applications of the ’228 patent and of the ’456 patent to recite
`
`“a hand-held device comprising . . . processor.” POR, p.15; Petition, pp.11-13. As
`
`indicated above, this language clearly requires the processor to be part of the
`
`handheld device, not some remote processor such as in a personal computer. PO
`
`points to nothing in the file history that suggests some contrary understanding.
`
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`

`Case No. IPR2019-00156
`
`PO’s Extrinsic Evidence Should Be Given Little Weight
`4.
`At the outset, and as PO acknowledges, extrinsic evidence cannot be used to
`
`change the meaning of claims in derogation of the intrinsic evidence. Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005); POR, p.30.
`
`PO argues claims of U.S. Patent No. 6,263,233 demonstrate a hand-held
`
`device wherein not all “comprising” elements are included in the hand-held
`
`device. POR, pp.34-35. PO is wrong. PO’s incomplete claim analysis in an
`
`unrelated, expired patent has little to do with the claims of the color scanning
`
`patents. Moreover, although claim 1 describes a handheld apparatus comprising
`
`three elements and dependent claim 4 recites additional housing capable of being
`
`handheld for two of the elements (the lens 18 and the window 20), this does not
`
`mean that the three elements are not physically incorporated within the handheld
`
`apparatus. Ex.1073, 4:42-65. Specifically, the additional housing may provide the
`
`additional movement of 18 and 20, as shown as arrows 24 and 25 in FIG. 1,
`
`below. See also id., 2:16-19; 2:48-57; Fig.1A (showing lens 18 and window 20 as
`
`part of the handheld head 32).
`
`13
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`

`Case No. IPR2019-00156
`
`
`Relying on Dr. Valley, PO asserts a specialized construction of “hand-held
`
`device” purportedly understood by a dentist or orthodontist – “simply a device that
`
`is operable by hand, irrespective of where the individual components comprising
`
`the device are physically located.” POR, pp.19-20, 12-13. PO is wrong.
`
`Dr. Valley’s original opinion regarding the meaning of a hand-held device is
`
`unsupported by evidence except to allegedly show that “hand-held device” may be
`
`referred to as “handpiece” in the dental arts. Ex.2009, ¶53 (referencing Exs.2011,
`
`2012), see also Ex.1113, 54:1-10; 80:23-85:4; 91:11-20; 97:1-15. However,
`
`contrary to PO’s assertions, “handpiece” is defined as “the part of a mechanized
`
`device designed to be held or manipulated by hand especially: the handheld part of
`
`an electrically powered dental apparatus that hold the revolving instruments (as a
`
`14
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`

`Case No. IPR2019-00156
`
`bur).” Ex.1109, see also Ex.1110; Ex.1113, 43:17-21; 91:24-94:15. Even Dr.
`
`Valley refers to the portion held in the hand as the “hand-held device” or
`
`“handpiece” throughout her cross-examination. Ex.1113, 78:15–79:4 (“the
`
`handpiece is just one of the components, and it’s designed to be slightly larger than
`
`a pen for many reasons. It’s ergonomic. It fits in my hand. It goes in the mouth.
`
`It’s comfortable for the patient.”), see also 55:12–56:9; 86:4-21; 87:16-20; 87:21-
`
`88:6. Dr. Valley was unable to point to any evidence supporting her construction
`
`of “hand-held device” or “handpiece.” Ex.1113, 43:1-21; 91:11-20; 95:17-97:15.
`
`Facing unequivocal evidence, Dr. Valley withdrew her specialized definition
`
`(“I want it to be clear that I’m not trying to convey that the ’228 patent is simply
`
`just a device that the dental practitioner can operate by hand.” Ex.1113, 71:22–
`
`72:20, see also 74:7-13.) Accordingly, PO has no evidence—intrinsic or
`
`extrinsic—to support that the hand-held device is simply a device that is operable
`
`by hand irrespective of where the individual components comprising the device are
`
`physically located.
`
`5.
`
`PO’s Newly Defined Level of Ordinary Skill in the Art Does
`Not Inform PO’s Claim Construction
`PO argues that it is appropriate to turn to extrinsic evidence to consider how
`
`a person of skill in dental arts would have understood the term “hand-held device”
`
`in the context of the ’228 patent specification. POR, pp.31-33. This argument is
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`Case No. IPR2019-00156
`
`unsupported by law or fact, and completely inconsistent with all of PO’s previous
`
`characterizations of POSITA.
`
`a.
`
`PO Fails to Cite to Legal Authority for Alternative
`POSITA Qualifications
`PO requests that the Board construe “hand-held device” from the view of a
`
`dental or orthodontic specialists and all other claim terms from that of someone
`
`with optical scanning knowledge/experience. Compare, POR, p.18 to pp.36-37 (“a
`
`POSITA would have understood [that other claim terms] would have a well-
`
`understood structural meaning in the optical scanning arts.”). PO further provides
`
`alternative POSITA qualifications for the same color scanning patents in different
`
`proceedings. See, e.g., Ex.1106, p.24. Yet, PO fails to provide any justification
`
`(let alone cite to any legal authority) for providing alternative qualifications of a
`
`POSITA for selected claim terms within the same patent or for the same patent in
`
`different proceedings.
`
`b.
`
`PO’s New Characterization of a POSITA is
`Inconsistent With Its Previous Positions
`PO did not require knowledge/experience in the dental or orthodontic field
`
`in the related ITC investigation regarding the color scanning patents, instead
`
`requiring knowledge/experience in optical scanning. Ex.2015, p.27. Moreover,
`
`PO’s characterization of a POSITA in color scanning patents IPR2019-00157,
`
`IPR2019-00159, and IPR2019-00160 (“additional IPRs involving same patents”) is
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`16
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`Case No. IPR2019-00156
`
`identical to that proposed in the ITC. See, e.g., Ex.1106, p.24. Yet, PO fails to
`
`explain why it is providing alternative qualifications in this proceeding.
`
`c.
`
`PO’s Expert Disagrees With the New
`Characterization of a POSITA and Adopts
`Petitioners’ Definition
`Dr. Bajaj presents POSITA qualifications that are similar to those proposed
`
`by the PO in the ITC and in the additional IPRs involving same patents – requiring
`
`optical scanning experience and no knowledge/experience requirement in the
`
`dental or orthodontic field. Ex.2001, ¶26. Moreover, PO’s two experts in the
`
`additional IPRs involving same patents adopted Petitioner’s qualification of a
`
`POSITA – requiring experience in optical imaging systems and image processing
`
`and no knowledge/experience requirement in the dental or orthodontic field.
`
`Ex.1104, ¶30; Ex.1105, ¶30. Yet, PO fails to explain why its own experts do not
`
`agree that a POSITA needs to have knowledge/experience in the dental or
`
`orthodontic fields.
`
`d.
`
`PO’s Experts Fail as Experts Under PO’s Proffered
`Qualifications
`PO argues that an expert would be a person such as a dentist or an
`
`orthodontic specialists with knowledge in optical imaging systems and image
`
`processing (or in optical scanning). POR, p.18. PO is wrong because an expert in
`
`the color scanning patents need not have dental or orthodontic
`
`knowledge/experience. Neither of PO’s experts in the instant IPR qualify as
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`Case No. IPR2019-00156
`
`experts according to PO’s description: Dr. Valley fails to have the identified
`
`knowledge in optical imaging systems and image processing (or in optical
`
`scanning) and Dr. Bajaj is not a dentist or an orthodontic specialist or a certified
`
`prosthodontic laboratory technician having at least a year of experience in the field.
`
`Ex.2010; Ex.2002; Ex.1113, 24:7-8; 30:15–32:2.
`
`D. Ancestral Applications Lack Written Description Support for the
`Claims
`PO argues it is entitled to written description for the disputed claim
`
`limitation. POR, pp.45-56. PO is wrong. First, PO fails to show that the claimed
`
`hand-held device is disclosed either actually or inherently. Second, PO incorrectly
`
`relies on an obviousness standard inapplicable to the written description inquiry.
`
`Third, PO provides other equally inapplicable arguments to the written description
`
`inquiry. Fourth, the purported supporting view finder embodiment does not
`
`include a hand-held device comprising a processor.
`
`1.
`
`PO Fails to Demonstrate That a POSITA Would Conclude
`From the Ancestral Applications That the Inventor was in
`Possession of the Claimed Invention
`In contrast to Petitioners’ arguments based on the disclosures in the ancestral
`
`applications, PO relies on the disclosure of the color scanning patents and makes
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`Case No. IPR2019-00156
`
`no attempt to reference the applications4. POR, pp.45-56. Thus, PO has failed to
`
`meet its burden of demonstrating how the ancestral applications provide written
`
`description support for the claimed invention. More importantly, here, as in the
`
`ITC, PO has failed to demonstrate that a POSITA would conclude from the four
`
`corners of ancestral applications of the ’207 patent (or from the non-claim portions
`
`of the ’207 patent) that its inventor

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