Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`
`Paper No. ____
`
`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.
`
`
`Patent No. 9,336,336
`Issue Date: May 10, 2016
`Title: 2D IMAGE ARRANGEMENT
`
`
`
`Inter Partes Review No. Unassigned
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`U.S. Patent No. 9,336,336
`
`Paper No. ____
`
`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.
`
`
`Patent No. 9,336,336
`Issue Date: May 10, 2016
`Title: 2D IMAGE ARRANGEMENT
`
`
`
`Inter Partes Review No. Unassigned
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
`
`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`
`TABLE OF CONTENTS
`
`Page
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`NOTICE OF LEAD AND BACKUP COUNSEL ...................................................... 1
`
`NOTICE OF EACH REAL-PARTY-IN-INTEREST ................................................ 1
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`NOTICE OF RELATED MATTERS ........................................................................ 1
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`NOTICE OF SERVICE INFORMATION ................................................................. 2
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`I.
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`II.
`
`GROUNDS FOR STANDING ........................................................................ 2
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`STATEMENT OF PRECISE RELIEF REQUESTED .................................... 2
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`III. THRESHOLD REQUIREMENT .................................................................... 2
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`IV. STATEMENT OF REASONS FOR RELIEF REQUESTED ......................... 3
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`A.
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`B.
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`C.
`
`D.
`
`Introduction ........................................................................................... 3
`
`The ’336 Patent and Its Claims ............................................................. 5
`
`Prosecution of the ’336 Patent .............................................................. 6
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`Level of Ordinary Skill in the Art ......................................................... 7
`
`V.
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`CLAIM CONSTRUCTION ............................................................................ 8
`
`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY .................................................................................. 12
`
`A.
`
`[Ground 1] Claims 1-14, 16-20, 22-30 Are Anticipated by
`Malfliet, or Alternatively Rendered Obvious by Malfliet Alone
`or in View of Kopelman ...................................................................... 12
`
`1.
`
`2.
`
`3.
`
`Overview of Malfliet ................................................................. 12
`
`Overview of Kopelman ............................................................. 17
`
`Overview of Wiedmann ............................................................ 19
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`Independent Claims 1 and 29 Are Anticipated by Malfliet
`4.
`or, in the Alternative, Rendered Obvious by Malfliet and
`Kopelman/Wiedmann ............................................................... 21
`
`5.
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`6.
`
`Dependent Claims 2-14, 16-20 22-28 and 30 ........................... 40
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`Rationale to Combine ............................................................... 58
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`[Ground 2] Claim 15 Is Obvious Based on Malfliet (with or
`without Wiedmann or Kopelman) in view of Lehman ....................... 62
`
`[Ground 3] Claim 21 Is Obvious Based on Malfliet (with or
`without Wiedmann or Kopelman) in view of Seeger ......................... 64
`
`[Ground 4] Claims 6-8 Are Obvious Based on Malfliet (with or
`without Wiedmann or Kopelman) in view of MacDougald ............... 64
`
`B.
`
`C.
`
`D.
`
`VII. THE PROPOSED GROUNDS ARE NOT REDUNDANT .......................... 66
`
`VIII. THE PROPOSED GROUNDS ARE NOT SUBSTANTIALLY THE
`SAME AS THOSE PRESENTED TO THE PATENT EXAMINER ........... 67
`
`IX. CONCLUSION .............................................................................................. 67
`
`PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103 .................... 68
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`CERTIFICATE OF SERVICE ................................................................................. 69
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`CERTIFICATE OF COMPLIANCE ....................................................................... 70
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
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`EXHIBIT LIST
`
`Ex. #
`1001
`1002
`1003
`1004
`1005
`1006
`
`Exhibit
`U.S. Pat. No. 9,336,336 to Deichmann et al. (“the ’336 patent”)
`Declaration of Joseph Mundy, Ph.D.
`Curriculum Vitae of Joseph Mundy, Ph.D.
`Image File Wrapper for the ’336 patent
`U.S. Patent No. 7,156,655 to Sachdeva et al.
`International Publication Number WO 2008/128700 A1 to Malfliet et
`al.
`1007 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 (Translation and Original)
`U.S. Patent No. 6,845,175 to Kopelman et al.
`U.S. Patent No. 6,568,936 to MacDougald
`Lehman, Thomas M., et al., “Survey: Interpolation Methods in Medical
`Image Processing,” IEEE Transactions on Medical Imaging, Vol. 18,
`No. 11, November 1999
`U.S. Patent Publication No. US2002/0075389 to Seeger
`Definition of “virtual” from www.webopedia.com
`
`1008
`1009
`1010
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`1011
`1012
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`NOTICE OF LEAD AND BACKUP COUNSEL
`Lead Counsel: Matthew B. Lowrie, (Reg. No. 38,228), (617) 342-4000
`
`Backup Counsel: Christopher J. McKenna, (Reg. No. 53,302), (617) 342-4000
`
`Address: Foley & Lardner LLP, 111 Huntington Avenue, Suite 2600, Boston,
`
`MA 02199.
`
`Fax: 617-342-4001
`
`NOTICE OF EACH REAL-PARTY-IN-INTEREST
`
`Petitioners list the real-parties-in-interest as exocad GmbH, exocad America,
`
`Inc., Ivory GmbH, Ivory Holding GmbH, Ivory Global Holdings GmbH, CETP III
`
`Ivory SARL (“CETP” is Carlyle Europe Technology Partners”), CETP III
`
`Participations SARL, SICAR, and Carlyle Europe Technology Partners III, L.P.1
`
`NOTICE OF RELATED MATTERS
`
`U.S. Patent No. 9,336,336, (“the ’336 patent”) is currently asserted in
`
`3Shape A/S v. exocad GmbH, and exocad America, Inc., Case No. 1:17-cv-00239-
`
`ER-MPT (D. Del.). Petitioners are also filing another IPR against the ’336 patent
`
`concurrently with this Petition.
`
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`1 None of the entities other than exocad GmbH and exocad America, Inc. meet the
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`definition of a real-party-in-interest, but Petitioners nonetheless list those
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`additional entities as real-parties-in-interest in this matter.
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`1
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`NOTICE OF SERVICE INFORMATION
`
`Petitioner consents to electronic service at: exocadIPR@foley.com. Please
`
`address all correspondence to the lead counsel and backup counsel at the address
`
`above, with courtesy copies to the email address identified above.
`
`I. GROUNDS FOR STANDING
`Petitioners certify that the ’336 patent is available for inter partes review
`
`(“IPR”) and that Petitioners are not barred or estopped from requesting IPR on the
`
`grounds presented.
`
`II. STATEMENT OF PRECISE RELIEF REQUESTED
`Petitioners respectfully request the Board initiate an IPR and cancel claims
`
`1-30 of the ’336 patent as unpatentable based on the following grounds.
`
`Ground
`1
`
`Claims
`1-14, 16-20,
`22-30
`
`2
`
`3
`
`4
`
`15
`
`21
`
`6-8
`
`Description
`Anticipated or obvious under §§ 102, 103 by
`Malfliet, or Alternatively Obvious under § 103 based
`on Malfliet and Kopelman, or Malfliet and
`Wiedmann
`Obvious under § 103 based on Malfliet, Kopelman
`(or Wiedmann) and Lehman
`Obvious under § 103 based on Malfliet, Kopelman
`(or Wiedmann) and Seeger
`Obvious under § 103 based on Malfliet, Kopelman
`and MacDougald
`
`
`III. THRESHOLD REQUIREMENT
`There is a reasonable likelihood that Petitioners will prevail in this IPR
`
`because each of the elements of claims 1-30 of the ’336 patent is anticipated or
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`rendered obvious by the prior art as explained below and in the accompanying
`
`Declaration of Joseph Mundy, Ph.D. Ex. 1002.
`
`IV. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A.
`Introduction
`The ’336 patent (Ex. 1001) is generally directed to designing a dental
`
`restoration (e.g., one or more newly modeled artificial teeth/“restorations”) by
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`arranging a 2D image (e.g., of a person’s face) and a 3D model (e.g., of a dental
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`model of the patient’s oral cavity with the restorations) – so one can see what the
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`dental restoration will look like when implanted. Ex. 1001, claim 1. An example
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`of a restoration is a bridge of three teeth, in Figure 11. Ex. 1001, Fig. 11; 24:18-
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`25:26.
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`Similar systems and methods were known, as acknowledged in the patent
`
`itself. According to the patent, such systems used 3D models of the dental
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`restoration and those systems may add color data from a color image into the 3D
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`model. Ex. 1001 at 3:33-37. The patent states that it keeps its 2D image and 3D
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`model as “separate data representations”. Id. at 3:28-30, 3:36-37.
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`Other prior art shows such systems – one of which was of record: Malfliet.
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`Ex. 1006. During prosecution, the Examiner rejected all claims based on Malfliet.
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`Ex. 1004 at 0825-834.
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`U.S. Patent No. 9,336,336
`The rejection on Malfliet was overcome by amending the claims and
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`(incorrectly) arguing that Malfliet only taught using 2D images to first build a 3D
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`face model, and then aligning/visualizing the 3D (not 2D) face model with a 3D
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`dental model. Id. at 0847-852, 0855-856. The Examiner then allowed the claims,
`
`without explanation. Id. at 0907.
`
`The Applicants’ argument was simply wrong. Malfliet expressly discloses
`
`using a single 2D image of the patient’s face, as an alternative. Ex. 1006 at 18:27-
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`30, 23:17-19; Ex. 1002, ¶95. Every limitation of at least claim 1 was thus actually
`
`met by Malfliet, if the Applicants’ incorrect argument is set aside. Moreover, to
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`the extent the patent owner could contend that the “separate representations”
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`limitation is not met, it would be obvious to do so. There are only two possibilities
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`for the patient’s face – a 2D and a 3D image. Malfliet teaches that “sometimes
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`only a 2D image is available.”
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`Other art (Wiedmann (Ex. 1007) and Kopelman (Ex. 1008)) also teach using
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`a 2D image of the patient and a 3D model of the teeth, and there is nothing
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`unpredictable or surprising about doing so. Wiedmann, for example, includes
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`photos showing the cutting of teeth from a 2D face image and aligning/visualizing
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`the 2D image with a 3D dental model. Kopelman also shows the
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`aligning/visualizing a 2D image of the face (typically but not necessarily a 2D x-
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`ray) – with a 3D tooth model.
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`U.S. Patent No. 9,336,336
`B.
`The ’336 Patent and Its Claims
`The ’336 patent is directed to a method of designing a dental restoration for
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`a patient, which includes providing one or more 2D images that include at least one
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`facial feature (such as lips) (i.e., a 2D face image which the patent describes as
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`including digital photographs and X-Rays); (2) virtually cutting the teeth or
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`rendering transparent (or partly transparent) some part of the 2D image; (3)
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`providing a 3D virtual model of at least part of the patient’s oral cavity (i.e., a 3D
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`dental model), (4) arranging the 2D image(s) relative to the 3D virtual model such
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`that they are aligned and visualized in a virtual 3D space while maintaining them
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`as “separate representations,” and (6) designing the dental restoration model,
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`where the restoration is designed to fit the facial feature (e.g., lips) of the 2D
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`image(s). Ex. 1001, Abstract; claim 1; Fig. 1; 19:46-20:29.
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`With respect to arranging/aligning and maintaining as separate
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`representations, the summary of the invention recites that the 2D image and 3D
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`model are not fused or merged into one representation. Id. at 3:25-37. The
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`specification then goes on to explain that maintaining separate representations
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`means that the 2D image and 3D model are “separate representations and not one
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`representation containing data from two representations.” Id. at 21:14-17.
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`C.
`Prosecution of the ’336 Patent
`During the prosecution history, the Examiner initially rejected the claims
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`based on Malfliet. Ex. 1004 at 0825-35. In response, the Applicants amended the
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`independent claims (which correspond to issued claims 1 and 30) to add that the
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`2D image and 3D model “remain separate representations after being arranged.”
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`Id. at 0847 & 0852.
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`The Applicants argued that “[i]n Malfliet, different embodiments are shown,
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`one where multiple 2D images are used to build a 3D face model, and another
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`where a face scanner is used to scan the face and create a 3D face model,” resulting
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`in a “combined 3D model” of the face. Id. at 0855. The Applicants acknowledged
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`such models “can be used to give a visual view of the expected treatment
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`outcome,” but argued:
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`However, building a 3D model from 2D images [in Malfliet] requires the
`dentist to take several images of the patient and it is difficult to really build a
`nice looking 3D model from these several images. …
`
`In contrast … the present application uses one 2D image and aligns
`this with a 3D dental model…. The images are arranged so that… [the
`2D image and 3D model] are aligned when viewed from a viewpoint
`and remain separate representations after being arranged.
`Accordingly, a user only needs a standard digital camera, e.g., a
`smartphone….
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`U.S. Patent No. 9,336,336
`Malfliet teaches a more complicated, and in many cases a more
`expensive/time consuming, method since it teaches to build a 3D face
`model and combine this with the 3D dental model.
`
`Id. at 0855-56 (original emphasis).
`
`The Applicants made further amendments in supplemental amendments
`
`dated February 5 and March 3, 2016, purportedly to “clarify” the claims. Id. at
`
`0884-89 & 0895-900. The amendments added to the independent claim limitations
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`of “cutting of teeth or rendering part of the 2D image transparent or partially
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`transparent” and that the facial feature comprises lips. Id. at 0895 & 0899. These
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`limitations were previously in dependent claim 118, which the Examiner had also
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`rejected under Malfliet. Id. at at 0828-29. After the amendment and supplemental
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`amendment were filed, the case was allowed without further comment. Id. at 0907.
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`D. Level of Ordinary Skill in the Art
`A POSITA in the art of software systems, including digital dental systems,
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`at the time of the filing date of the provisional application on June 29, 2010, would
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`have generally had 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
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`relevant academic, research or industry work experience. Such a person would
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`also typically have the ability to learn information about the needs of the users of
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`dental design software (e.g., dentists, dental lab clinicians, etc.), with such
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`information often coming from others who have interacted or worked with such
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`U.S. Patent No. 9,336,336
`users of dental design software or have relevant experience in the dental design
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`software industry. Ex. 1002, ¶¶47-54.
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`V. CLAIM CONSTRUCTION
`“2D image” means: “a digital representation of an image stored in two-
`
`dimensional format (e.g., as a pixel/texture value for [x, y] coordinates only), such
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`as a file resulting from a picture taken with a digital camera or a digitized two
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`dimensional X-Ray.”
`
`The patent states that “2D image” and “2D digital image” are used
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`interchangeably. Ex. 1001 at 2:53-55. The above is the ordinary meaning of 2D
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`digital image. The patent also refers to “pixels” (e.g., id. at 11:17-18) and confirms
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`that the 2D image may be a (digital) photograph (e.g., id. at 19:50-54) or an X-ray
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`(id. at 10:5-6). Finally, the patent describes an embodiment that also includes use
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`of a 3D model of the face. Looking at the model in two dimensions (i.e., 2D data)
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`is not described as a 2D image. Rather, the patent states that:
`
`When the 3D face scan is seen on the screen it may be seen from a certain
`perspective thereby yielding a certain 2D projection of the 3D scan. Thus a
`2D image may be derived from the 2D projection of the 3D face scan.
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`Id. at 10:23-26. The specification describes a 2D image not as the data itself but as
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`2D data that is converted into a 2D digital image – a file in a 2D format. See
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`generally Ex. 1002, ¶¶58-60.
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`U.S. Patent No. 9,336,336
`“3D virtual model of at least part of an oral cavity of the patient”
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`means: “a digital representation of at least part of an oral cavity of the patient with
`
`or without a restoration, stored in three-dimensional format (such as texture and
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`other values for [x, y, z] coordinates).”
`
`The patent defines “modeling” as what is “done to the restoration to make it
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`fit the patient” and states that a technician may design/model a restoration on a 3D
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`virtual model. Id. at 2:30-33. The claims, however, state that the virtual model is
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`provided and, after this (due to antecedent basis), “design[ing] a restoration for the
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`3D virtual model….” (e.g., Claim 1 at 26:19-21.) Figure 11a is described as
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`showing a 3D virtual model. Id. at 24:18-22. It already includes a restoration, but
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`also states that a “first design” is designed. Id. Thus, it would appear that a
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`“model” is defined to include a restoration and then perhaps used inconsistently as
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`not requiring a restoration. A broadest reasonable interpretation includes both.
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`See generally Ex. 1002, ¶¶61-62.
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`“Virtual 3D space” means: “any space shown on a screen, in contrast to
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`real-world space, in which a user or program can move one or more objects in
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`three dimensions with respect to another object.” “Virtual” is understood to mean
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`“not real,” distinguishing between something conceptual and something that has a
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`physical reality. See Ex. 1012. Although the screens of the computers in the
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`patent are two-dimensional, the patent describes aligning the 3D virtual model with
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`respect to the 2D image in three dimensions meaning that the 3D virtual model can
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`be moved in three-dimensions with respect to the 2D image. E.g., Id. at 11:49-55.
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`See generally Ex. 1002, ¶63.
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`“Remain separate representations after being arranged” should be
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`construed to mean: “the 2D image and the 3D virtual model remain in their
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`respective formats and are not merged into a single representation.”
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`The first use of this term, in the specification’s summary of invention,
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`explains that the representations remain separate and are not fused or merged
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`together. Id. at 3:25-28. The specification asserts that processing times are faster
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`because merging (texture from) a 2D image into a 3D model (and then using only
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`the 3D model) is computationally expensive. Id. at 3:28-37. The only other use in
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`the specification of this term (besides the claims) is a paragraph concerning Figure
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`3c, showing a side-view of a 2D image and a 3D sphere and stating that they are
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`separate, may be any distance apart, and they are separate representations “and not
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`one representation containing data from two representations.” Id. at 21:12-16.
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`Finally, the antecedent basis is “the 2D image” that was provided in an earlier step
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`– it is not a new representation of the 2D image derived from it. See generally Ex.
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`1002, ¶¶64-65.
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`“Designed to fit” / “fit”. This limitation may be indefinite. “Fit” is not
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`expressly defined. Immediately after its use in the summary of the invention (id. at
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`2:30-34), “suitability” is defined as “may comprise physiologically suitable,
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`esthetically suitable or appealing.” Id. at 2:35-39. Other portions of the
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`specification provide for many ideas of what “fit” may mean and many are
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`“aesthetic” and “subjective”. Id. at 5:59; 6:1-31. One example describes
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`eliminating a gap in teeth as being “designed to fit the lips.” Id. at 25:11-22.
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`While being aesthetically pleasing may be a user’s intention (and any user of the
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`prior art as well), the limitation is indefinite. See Datamize, LLC v. Plumtree
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`Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“aesthetically pleasing” is
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`indefinite).
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`A broadest reasonable interpretation would be to accord the limitation no
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`patentable weight or to construe it as “designed with the intention that the
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`restoration be physiologically suitable, aesthetically suitable or appealing” (with
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`the understanding that this would be the intention of the user of any restoration
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`design system including in the prior art). See generally Ex. 1002, ¶66.
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`
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`“Section at least two or more teeth” (claim 14) may also be indefinite.
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`“Section” appears only in claim 14 and a simple statement in the specification is
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`identical to the claim. Id. at 15:62-64. Section/sectioning may mean showing a
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`portion of the teeth, rather than all of them, it may or may not mean removing (or
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`rendering transparent) adjacent teeth, or it may mean showing a cross-section of
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`teeth. Ex. 1002, ¶67. As discussed below, none is inventive. In any event, a
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`broadest reasonable interpretation would be “either to allow two or more of the
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`patient’s teeth to be viewed rather than all the teeth at once or showing a cross-
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`section of two or more teeth.” See generally Ex. 1002, ¶67.
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`
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`“Prepared tooth” means “a tooth that has been prepared for restoration,
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`such as cutting a flat surface on a broken tooth, to receive an implant.” See Ex.
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`1001 at 4:50-52.
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`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY
`A.
`[Ground 1] Claims 1-14, 16-20, 22-30 Are Anticipated by Malfliet,
`or Alternatively Rendered Obvious by Malfliet Alone or in View of
`Kopelman
`1. Overview of Malfliet
`Malfliet (Ex. 1006) was published in English on October 30, 2008 and
`
`qualifies as § 102(b) prior art.
`
`Malfliet describes computer software to plan dental treatment. Like the ‘336
`
`patent and other systems for planning dental treatments, e.g., restorations, there are
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`two (virtual) objects – one for representing the oral cavity (with a restoration in it)
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`and one for representing (at least part) of the patient’s face. Generally, the ‘336
`
`patent refers to these as the 2D image and the 3D virtual model.
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`Malfliet also describes obtaining data about the area being treated (which
`
`may include the oral cavity) and an image or images of the face. E.g., 2:8-9; 5:25-
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`9:20. This is the “face model.” In Malfliet, the face model is analyzed using a
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`number of “aesthetic” and “functional” rules to derive a modified and optimal 3D
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`tooth set-up. E.g., 16:13-21. This is the 3D tooth model(s).
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`Malfliet displays a virtual representation of the treatment area in which the
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`face model is aligned and visualized simultaneously with the 3D modified tooth, so
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`that the patient can see what the treatment will look like. 18:13-19:10. The face
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`model and tooth model are aligned by “position[ing], orient[ing], and scal[ing]
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`them relative to each other. E.g., 18:24-30.
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` The face model in Malfliet is generally described as a 3D model that can be
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`created (for example) by combining various 2D and 3D data from photographs.
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`5:25-9:20. During prosecution, the claims were initially rejected based on
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`Malfliet. The only argument in response was that Malfliet teaches that “multiple
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`2D images are used to build a 3D face model” or “a face scanner is used to scan
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`the face and create a 3D face model,” creating a “combined 3D model” of the face.
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`Ex. 1004 at 0855. The Applicants argued the invention of the ’336 patent was
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`different from Malfliet because the 2D image and 3D model “remain separate
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`representations after being arranged.” Id. Applicants argued that Malfliet only
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`taught “to build a 3D face model and combine this with the 3D dental model.” Id.
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`at 0856.
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`The Applicants’ arguments that Malfiet only teaches a 3D face model,
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`however, was in error – Malfliet explicitly provides that the face model may be a
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`U.S. Patent No. 9,336,336
`single 2D image. Ex. 1006 at 18:27-30 (“For instance when only a 2D photograph
`
`of the patient is available then the optimal tooth set-up should be positioned,
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`oriented, and scaled relative to the 2D photograph….”); see also 23:17-19 (“the
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`data about a face of a patient comprises one or more of: a 2D photograph,….”).
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`The patentee may argue that Malfliet does not necessarily disclose aligning a
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`2D image with a 3D model on the ground that, when a 2D photograph or image is
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`used in Malfliet, it may be the case that the photograph is converted into a planar
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`3D image so that CAD software can manipulate a 3D (planar) image of the face
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`relative to the 3D tooth model. In this case, a 2D image is not aligned relative to
`
`the 3D model, but rather a (planar) 3D image is aligned with the 3D model. In
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`addition, the patentee may argue that, while the two models can be moved relative
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`to each other within CAD software, that is only the case when they are combined
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`into a single file/work document, i.e., one representation that includes data from
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`two representations (the face model and the tooth model) which are then aligned
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`with respect to each other.
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`If so, Malfliet would nevertheless render the claims obvious. First, when a
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`single 2D facial image is used, there are only three possibilities to visualize it
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`together with a 3D tooth model: (i) both being 3D (by converting the 2D face
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`image to a planar 3D image), (ii) a 2D face model and a 3D tooth model which are
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`necessarily separate because they are in a different storage format (as in the ‘336
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`patent), and (iii) a 2D face model and a 2D tooth model (converting the 3D tooth
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`model to 2D). Ex. 1002, ¶269.
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`While the first may be a logical choice, the second is also an obvious choice
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`for a system that uses only 2D face images – something both obvious and known,
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`as shown in Kopelman and Wiedmann discussed below. Id. at ¶¶269-70 (The
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`third – 2D-to-2D – would not likely be used because there is no reason not to
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`convert the 3D tooth model to 2D. Id. n.14.)
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`In addition, selecting one obvious option from a limited universe of three
`
`possibilities is not patentable. This is routine computer science and there is
`
`nothing surprising or innovative about a selection among them. It is entirely
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`predictable. Ex. 1002, ¶271. See KSR Int’l Co. v. Teleflex Inc., 550 U.S 398, 402
`
`(2007).
`
`Second, when the design is nearing completion, Malfliet suggests
`
`“visualizing” the combination of 2D image and 3D tooth model by aligning them
`
`and then “embedding” the 3D model in the 2D image. Ex. 1006 at 18:27-30. They
`
`are plainly separate representations in 2D and 3D formats up to that point in time.
`
`And they are plainly still separate after being aligned (and at least before
`
`“embedding” as will be discussed next). Ex. 1002, ¶275.
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`In any event, while the above-cited portion of Malfliet disclosing use of a
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`2D photo uses the word “embedded” (18:27-30), the word “embedded” does not
`
`mean that the 2D image and 3D model do not “remain separate.” Id.
`
`First, “embed” simply means shown together in alignment. There is no
`
`technological reason to fuse the representation so that they are inseparable – the
`
`same combined image can be shown whether or not one plane of the 3D model is
`
`inseparably fused into the 2D model. The word “embedded” is merely used as
`
`synonymous with “visualizing them simultaneously on a display” from the prior
`
`sentence (18:24-27) and there is no description, for example, of converting the 3D
`
`tooth set-up to 2D, which would be required if “embed” was to have such a
`
`meaning here in Malfliet. A POSITA would understand that “embedding” is done
`
`virtually on the computer screen and not by creating a new data structure that
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`inseparably includes both. Ex. 1002, ¶275.
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`Second, the two necessarily remain separate even so. The 3D tooth model is
`
`not lost in the process or it would be impossible to make further modifications or to
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`use the model to generate an implant. The 2D image is not lost, or it would be
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`impossible to generate more than one alternative – something Malfliet suggests
`
`will happen to look at alternative treatment options (for example). A POSITA
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`would understand that they remain separate to allow for future use. 18:14-19:4;
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`Ex. 1002, ¶275.
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`Third, the 2D image and 3D model remain separate representations after
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`alignment. That a separate additional step of “embedding” may also be performed
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`would not avoid anticipation. Ex. 1002, ¶275. See, e.g., Smith & Nephew, Inc. v.
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`Ethicon, Inc., 276 F.3d 1304, 1311 (Fed. Cir. 2001).
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`Fourth, it would be obvious not to merge the two into a single inseparable
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`image, since it is not necessary to do so to show the combined view to a patient (or
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`anyone else) and to allow future modification to the tooth model and future use of
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`the 2D image with modified or alternative designs. This is again simple computer
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`science. Ex. 1002, ¶275.
`
`Finally, Kopelman and Wiedmann show a system using only a 2D image
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`and a 3D model, as described by Dr. Mundy and below.
`
`2. Overview of Kopelman
`Kopelman (Ex. 1008) was issued on January 18, 2005 and qualifies as
`
`§ 102(b) prior art.
`
`Kopelman also describes a dental imaging processing method/system that is
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`used to design a dental restoration. It includes taking a 2D image, such as an X-ray
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`(e.g., Ex. 1008, Fig. 1A), and a 3D image of the patient’s teeth (e.g., Fig. 1B), and
`
`combining the 2D and 3D images, as shown in Figure 5, for example.
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`2D X-ray
`image
`
`3D tooth
`model
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`
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`Ex. 1008, Fig. 5; see also Figs.2 and 3A-B; 2:31-33; 3:55-4:2; 5:11-12; 5:13-15;
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`5:22; 6:22-39; 6:53-7:6.
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`Another example is shown in Figure 4:
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`2D image
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`3D tooth
`model
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`
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`To align the 2D image and 3D model, they are scaled, translated and rotated. 3:66-
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`67; 6:66-7:6; 6:35-39.
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`3. Overview of Wiedmann
`Wiedmann (Ex. 1007) was published in April 2008 and qualifies as 35
`
`U.S.C. § 102(b) prior art.
`
`Wiedmann discloses a software/computer system called Dental
`
`Reconstruction System (“DRS”) for designing a dental restoration. The process
`
`begins with two 2D images of the patient’s face (id. Fig. 1):
`
`
`
`
`
`The face is analyzed by the software, which then automatically searches for
`
`a 3D tooth model to fit the patient’s face (id. Figs. 5-6; 21, col. 2):
`
`
`
`
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`The teeth are cut out of the 2D image (id. Fig. 7):
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`
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`The 3D model of teeth is scaled such that its width is the width of nose base
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`of the 2D image (p. 22, col. 1), and the 3D model is positioned over the area of the
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`cut-out teeth in the 2D image (Figs. 8-10):
`
`
`
`
`
`
`
`
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`The restoration model can be translated and rotated to perform the
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`alignment. Ex. 1007 at 22, col. 1 & Figs. 8-10 (showing translation of model
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`left/right and up/down); Figs. 5-6, 11 (showing rotation). This allows the patient to
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`see how the restoration might look like. Id. at 22, col. 2.
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`The 3D restoration model remains in its 3D format, while the 2D image of
`
`the face remains 2D. FIG. 11 shows this to be the case and it is necessarily the
`
`case so, for example, the 3D model can be rotated:
`
`
`4.
`Independent Claims 1 and 29 Are Anticipated by Malfliet
`or, in the Alternative, Rendered Obvious by Malfliet and
`Kopelman/Wiedmann
`
`
`
`
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`Claims
`
`1. A computer-
`implemented
`method of
`designing a
`dental
`restoration for a
`patient:
`
`29. A system for
`designing
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