`Paper No. 9
`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. IPR2018-00785
`
`
`PETITION FOR REHEARING OF
`DECISION DENYING INSTITUTION OF INTER PARTES REVIEW
`
`
`
`IPR2018-00785
`U.S. Patent No. 9,336,336
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`LEGAL STANDARD ...................................................................................... 3
`
`III. ARGUMENT ................................................................................................... 5
`
`A. Malfliet .................................................................................................. 5
`
`1.
`
`2.
`
`3.
`
`The Record Does Not Establish that the Examiner
`Considered the Relevant Disclosure in Malfiet .......................... 5
`
`The Applicants’ Argument About Malfiet Was Erroneous ........ 7
`
`The Preliminary Response Confirms that the Issues
`Raised in the IPR are Different ................................................... 9
`
`B. Malfliet Combined with Kopelman .................................................... 11
`
`C. Malfliet Combined with Wiedmann .................................................... 14
`
`D. Additional Challenges ......................................................................... 14
`
`IV. CONCLUSION .............................................................................................. 14
`
`CERTIFICATE OF SERVICE ................................................................................. 16
`
`
`
`-i-
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`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`I.
`INTRODUCTION
`In the related proceeding filed by this Petitioner on the same day as the
`
`Petition in this proceeding, against the same Patent Owner for the same patent, the
`
`Board recently instituted trial, based on two different primary prior art references,
`
`“Sachdeva” and “Wiedmann”. See Exocad Gmbh et al. v. 3Shape A/S, IPR2018-
`
`00788, Paper 7 (Oct. 3, 2018). Nonetheless, Petitioner respectfully requests that
`
`the Board reconsider its Decision Denying Institution of Inter Partes Review in
`
`this proceeding.
`
`In declining to institute a trial, under 35 U.S.C. § 325(d), the Decision
`
`(Paper 8) relies on the premise that the Examiner already considered Applicants’
`
`argument. For the reasons explained below, Petitioner respectfully disagrees.
`
`At issue in this petition for rehearing is the whether the Examiner considered
`
`whether Malfiet discloses arranging a 3D model relative to a 2D image when
`
`deciding whether this limitation is met:
`
`arrange the at least one 2D image relative to the 3D virtual model… such
`that the at least one 2D image and the 3D virtual model are aligned… and
`remain separate representations….
`Ex. 1001 (’336 patent), claim 1 (26:12-16).
`
`The Examiner concluded that Malfiet did not, but three lines of Malfiet
`
`plainly do:
`
`
`
`1
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`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`For instance when only a 2D photograph of the patient is available then the
`optimal [3D] tooth set-up should be positioned oriented, and scaled relative
`to the 2D photograph....
`
`
`
`Ex. 1006 (Malfliet) at 18:27-30.
`
`
`
`The Examiner likely missed this disclosure because the Applicants overcame
`
`Malfiet by arguing that it only discloses using 2D face images to create a 3D model
`
`of the face. The Applicants argued (incorrectly) that there is no disclosure of
`
`orienting a 3D model of an oral cavity relative to a 2D face image. While it is true
`
`that the bulk of Malfiet discloses use of a 3D face model, the sentence above
`
`establishes beyond doubt that Malfiet also discloses using a 2D face image in the
`
`alternative.
`
`
`
`In its preliminary response in this IPR, the Patent Owner conceded that the
`
`above sentence discloses arranging a 3D model and 2D image. Patent Owner
`
`instead argued that the two have to remain separate and that the above sentence
`
`goes on to refer to “embedding” one in the other.
`
`That is, in responding to the Petition, the Patent Owner had to resort to a
`
`new argument that had never been presented to the Examiner. The Petition also
`
`offers evidence and argument on this issue – evidence and argument also not
`
`considered by the Examiner.
`
`
`
`Furthermore, in related IPR2018-00788, this Board construed the “remain
`
`separate” limitation as not imposing a time limit on how long the 2D image and 3D
`
`
`
`2
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`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`model must remain separate. Exocad, IPR2018-00788, Paper 7 at 8. This Petition
`
`also presented the view (now adopted by the Board) that the two need not remain
`
`separate for a specific length of time, and that in Malfliet, at a minimum, they are
`
`aligned and viewed before “embedding” (and also that “embed” does not mean
`
`merged). The Examiner did not have this claim construction or argument when the
`
`application was allowed.
`
`Combining the unquestionable disclosure in Malfiet of aligning a 2D face
`
`image and 3D tooth model, the new arguments and evidence of Petitioner, the
`
`Patent Owner’s (necessarily) new arguments in its Preliminary Response, and the
`
`Board’s claim construction, this IPR is plainly raising different issues than those
`
`considered by the Examiner. What is more, given the Board’s claim construction
`
`and the sentence quoted above, it is plain that this patent is invalid based on
`
`Malfiet. Petitioner respectfully requests that the Board reconsider denial of the
`
`Petition so that it may be heard by the Board alongside her sister petition.
`
`Petitioner also respectfully requests reconsideration on the other grounds in
`
`the Petition as the Examiner never considered some of the references and never
`
`considered an obviousness rejection.
`
`II. LEGAL STANDARD
`A request for rehearing of a decision whether to institute a trial “must
`
`specifically identify all matters the party believes the Board misapprehended or
`
`
`
`3
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`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`overlooked, and the place where each matter was previously addressed in a motion,
`
`an opposition, or a reply.” 37 C.F.R. § 42.71(d). The Board will review the
`
`previous decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of
`
`discretion may be indicated if a decision is based on an erroneous interpretation of
`
`law, if a factual finding is not supported by substantial evidence, or if the decision
`
`represents an unreasonable judgment in weighing relevant factors.” Palo Alto
`
`Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 39 at 2-3 (Feb. 14,
`
`2014) (internal citation omitted)).
`
` In weighing whether to exercise discretion to deny institution of an IPR
`
`based on § 325(d), the Board has listed the following non-exclusive factors: “(a)
`
`the similarities and material differences between the asserted art and the prior art
`
`involved during examination; (b) the cumulative nature of the asserted art and the
`
`prior art evaluated during examination; (c) the extent to which the asserted art was
`
`evaluated during examination, including whether the prior art was the basis for
`
`rejection; (d) the extent of the overlap between the arguments made during
`
`examination and the manner in which Petitioner relies on the prior art or Patent
`
`Owner distinguishes the prior art; (e) whether Petitioner has pointed out
`
`sufficiently how the Examiner erred in its evaluation of the asserted prior art; and
`
`(f) the extent to which additional evidence and facts presented in the Petition
`
`
`
`4
`
`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`warrant reconsideration of the prior art or arguments.” Becton, Dickinson & Co. v.
`
`B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (Dec. 15, 2017).
`
`III. ARGUMENT
`A. Malfliet
`With respect to the challenge based on anticipation by Malfliet, the Petition
`
`should not have been rejected based on § 325(d) because at least two of the factors
`
`identified above – (d) and (e) – weigh strongly against such a rejection. The
`
`arguments made during examination do not overlap with the arguments made in
`
`the Petition because the Examiner at most cited, but did not consider or discuss, the
`
`portion of Malfliet disclosing the use of a 2D face image (alone) that is arranged
`
`and visualized with a 3D tooth model.
`
`The Examiner erred in finding that Malfliet did not disclose a 2D face image
`
`arranged and visualized with the 3D dental model. That is manifest from the
`
`sentence quoted above.
`
`The Examiner’s error was caused by the Applicants’ erroneous argument to
`
`the Examiner that Malfliet did not disclose using a 2D face image. See Ex. 1004 at
`
`Ex. 1004 at 854-856 (arguing that Malfliet teaches only “to build a 3D face model
`
`and combine this with the 3D dental model.”) (emphasis added).
`
`1. The Record Does Not Establish that the Examiner Considered the
`Relevant Disclosure in Malfiet
`The decision denying institution reasoned that the Examiner “considered
`
`
`
`5
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`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`Malfliet in its entirety,” citing statements that “[a]lthough the specified citations
`
`are representative of the teachings of the art & are applied to specific [l]imitations
`
`within the individual claim, other passages/figures may apply as well” and that
`
`“[t]he entire reference is considered to provide disclosure relating to the claimed
`
`inventions.” Paper 8 at 9-10 (quoting Ex. 1004, 834-35).
`
`Petitioner respectfully submits that, as a practical matter, even where an
`
`Examiner has reviewed a reference in its entirety and made general statements
`
`about having done so, it is unrealistic to assume that the Examiner considered
`
`every line of a prior art reference with an eye toward every claim limitation. See,
`
`e.g., Microsoft Corp. v. Parallel Networks Licensing LLC, IPR2015-00486,
`
`Paper 10 at 14-15 (July 15, 2015) (reasoning, in part, that although a reference
`
`was disclosed in an IDS during prosecution, because the Examiner did not apply
`
`the reference to the claims, the petition should not be denied under § 325(d)).
`
`That is particularly true where, as here, the Examiner used the same block
`
`citation of a large portion of Malfiet as the support for every limitation in every
`
`independent and dependent claim and where the relevant disclosure of the 2D
`
`
`
`6
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`image arranged and visualized with 3D model appears in just three lines.1 It
`
`would be easy to overlook those three lines, especially when the Applicants are
`
`telling the Examiner, in essence, that the lines are not there, i.e., that the
`
`disclosure is not there.
`
`Moreover, the fact that an Examiner considered an entire reference is not
`
`alone sufficient for a § 325(d) rejection. Otherwise, the Board would not consider
`
`factors such as: (d) the extent of the overlap between the arguments made during
`
`examination and the manner in which a Petitioner relies on the prior art or a Patent
`
`Owner distinguishes the prior art and (e) whether a Petitioner has pointed out
`
`sufficiently how the Examiner erred in its evaluation of the asserted prior art. See
`
`Becton, Dickinson & Co., IPR2017-01586, Paper 8 at 17-18.
`
`2.
`The Applicants’ Argument About Malfiet Was Erroneous
`The Decision characterizes the argument made before the Examiner as
`
`follows:
`
`While Patent Owner may have argued only Malfliet’s disclosure of using 2D
`images to build 3D face models, Petitioner characterizes Patent Owner as
`having represented to the Examiner that Malfliet only discloses 3D face
`models, which is not what Patent Owner argued.
`
`
`1 Ex. 1004 at 825-33 (Office Action citing the same portions of Malfliet for each
`
`limitation: 2:15-3:19; 4:31-7:13; 7:19-8:16; 9:8-20; 15:4-16:12; 17:21-31; 18:14-
`
`19:10 & all figures). The relevant disclosure is at page 18, lines 27-30.
`
`
`
`7
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`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`Paper 8 at 12. Petitioner respectfully submits that this statement misperceived the
`
`arguments.
`
`
`
`The relevant limitation is arranging a 2D face image with a 3D restoration
`
`model. Applicants argued that Malfiet does not teach this, that it teaches aligning a
`
`3D face model with a 3D restoration model and that, when there is reference to 2D
`
`images, they are used to build a 3D face model before the two 3D models are
`
`aligned. There really is no other way to read the prosecution history. Patent
`
`Owner argued that the only things that can be aligned in Malfiet are a 3D face
`
`model (whether made from 2D images or a face scanner) and a 3D restoration
`
`model. Ex. 1004 at 854-856; e.g., id. at 855 (“it has become very popular to build
`
`3D models of the face and combine these with a 3D model of the teeth. This is, for
`
`example, the case in Malfliet.”); id. (“In contrast to Malfliet, …. the present
`
`application uses one 2D image and aligns this with a 3D dental model….”); id. at
`
`856 (“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.”).
`
` And that argument simply was not the whole truth. Malfiet certainly
`
`centers around 3D models. But Malfiet undeniably also discloses using a single
`
`2D image:
`
`
`
`8
`
`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`For instance when only a 2D photograph of the patient is available then the
`optimal [3D] tooth set-up should be positioned oriented, and scaled relative
`to the 2D photograph....
`
`
`
`Ex. 1006 at 18:27-30.
`
`3.
`
`The Preliminary Response Confirms that the Issues Raised
`in the IPR are Different
`Perhaps the most telling showing that the argument in the IPR Petition is
`
`different from the argument presented to the Examiner is that, in its Response to
`
`the IPR petition, Patent Owner does not make the same argument made during
`
`prosecution. During prosecution, the Applicants argued to the Examiner that
`
`Malfliet’s disclosure of 2D images was limited to using them to build a 3D face
`
`model, which was supposedly “popular” in the prior art. Ex. 1004 at 855. Now, in
`
`response to the IPR petition, Patent Owner changed course, admitting that Malfliet
`
`discloses that the face model that is visualized with the dental model (model of oral
`
`cavity) may constitute one 2D image. Paper 6 at 19-29.
`
`In the IPR, Patent Owner presents a new and different argument to attempt
`
`to distinguish Malfliet, which now centers mainly around the word “embed”.
`
`Paper 6 at 19-29. Patent Owner argues that this one word means that the
`
`disclosure of a 2D face image visualized with a 3D dental model at 18:27-30 of
`
`Malfliet (Ex. 1006) is actually disclosing that the 2D image and 3D model go
`
`through an (unexplained) process in which they are combined and in which the two
`
`
`
`9
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`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`representations are no longer separate after the 3D dental model has been aligned
`
`with the 2D face image.
`
`The Examiner never considered the meaning of the word “embed,” nor was
`
`the Examiner asked to do so by the Applicants during the prosecution. The
`
`argument considered by the Examiner is entirely different than the argument that
`
`would be considered in the IPR.2
`
`Petitioner notes that in the related IPR proceeding that was instituted by the
`
`Board, the Board adopted a construction of the phrase “remain separate
`
`representations after being arranged” that “does not place a temporal limitation on
`
`how long the 2D image and the 3D virtual model remain separate.” Exocad,
`
`IPR2018-00788, Paper 7 at 8.
`
`The lack of a temporal limitation is particularly relevant to this proceeding
`
`because it demonstrates that Patent Owner’s (new) argument attempting to
`
`distinguish Malfliet from the ’336 patent based on the word “embed” will likely
`
`
`2 The Board has relied on Unified Patents, Inc. v. Berman, IPR2016-01571, Paper
`
`10 at 11-12 (Dec. 14, 2016) (informative) to support its decision, but in Unified
`
`Patents, unlike here, the petitioner had not presented any argument distinguishing
`
`the Examiner’s prior consideration of the “Russell” reference from the analysis of
`
`Russell that would be used in the IPR. Id. at 12.
`
`
`
`10
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`not be successful if trial were instituted. As explained in the Petition, before the
`
`“embedding” occurs, the 2D face image and 3D tooth model are first aligned, and
`
`at that point in time, they are arranged and yet remain separate representations.
`
`See Paper 1 at 15 & 17 (citing Ex. 1002, ¶275); see also id. at 35.3
`
`In other words, not only is Patent Owner’s argument in the IPR different
`
`from the argument the Applicants made to the Examiner, weighing strongly against
`
`declining to institute this IPR under § 325(d), Petitioner is likely to prevail with
`
`respect to the challenged claims based on the Board’s claim construction.
`
`B. Malfliet Combined with Kopelman
`The Examiner also did not consider obviousness based on combining
`
`Malfliet with Kopelman. Petitioner thus also respectfully requests that the Board
`
`reconsider its decision not to institute the IPR based on these grounds.
`
`The Board focused on the Examiner having stated that he found the claims
`
`nonobvious over “Malfliet … in view of the taking of official notice regarding
`
`
`3 Similarly, the Patent’s Owner additional (incorrect) argument that the “embed”
`
`phrase means visualizing in a 2D space (Paper 6 at 38-41) will likely not be
`
`successful under this claim construction because even under that interpretation of
`
`the phrase, it does not account for the arrangement and visualization of the 2D
`
`image and 3D model prior to any embedding.
`
`
`
`11
`
`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`standard practices in the art, & the foreign search report” and that the search report
`
`included a citation to the foreign version of Kopelman (EP1124487 B1). Paper 8
`
`at 13-14 (quoting Ex. 1004 at 825). Respectfully, that should not be the relevant
`
`inquiry. The Examiner’s “obviousness” analysis relied entirely on Malfliet and
`
`included no analysis of any of the prior art in the foreign search report, or how it
`
`would be combined with Malfliet, if a combination were necessary.
`
`As discussed above, the Examiner rejected the claims of the ’336 patent
`
`application by broadly citing numerous of the same portions of Malfliet for each
`
`limitation and then stating that each limitation was also common technical
`
`knowledge for a skilled artisan. Ex. 1004 at 825-26. The rejection was thus
`
`essentially a finding of anticipation by Malfliet. The Examiner cited only Malfliet
`
`for every limitation and failed to cite any other prior art reference, including the
`
`Kopelman foreign patent (EP1124487B1). Id. The Examiner did not find that any
`
`element was not disclosed by Malfliet or explain any particular standard practice in
`
`the art that was not also disclosed by Malfliet. Id.
`
`The Applicants also treated it as an anticipation rejection. They did not
`
`argue that the Examiner was incorrect about any particular element being standard
`
`practice in the art or that it was incorrect for the Examiner to have found that using
`
`such known elements for their intended purpose was obvious. Ex. 1004 at 854-56.
`
`The Applicants did not argue that any element was not disclosed in any of the prior
`
`
`
`12
`
`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`art references in the foreign search report, including the Kopelman foreign patent
`
`(EP1124487B1). Id. Nor did the Applicants argue that there was no reason to
`
`combine any of the references. Id. Nor did the Applicants cite to EP1124487B1 in
`
`any part of this argument. Id.
`
`Perhaps most importantly, the Applicants did not make any argument that
`
`once it was known to arrange and visualize a 3D face model with 3D dental model
`
`– as the Patent Owner concedes was shown in Malfliet – it would not have been
`
`obvious to substitute a (simpler) 2D face image for the 3D face model. Id. The
`
`Applicants merely argued that Malfliet did not disclose the 2D-3D arrangement
`
`and visualization and that 2D-3D was actually: (a) more “simple” than using 2D
`
`images to build a “nice looking 3D model,” which is “difficult,” and (b) less
`
`expensive than using a 3D face scanner. Id. The Applicants did not argue that a
`
`2D-3D arrangement and visualization of objects was something that was not well
`
`known in the art (it was well-known) or that the Examiner had made any error in
`
`finding no reason to combine the references in this manner, if that is what the
`
`Examiner supposedly did.
`
`The combination of Malfliet with Kopelman, as well as the notion that
`
`substituting a 2D face image for the 3D face model in Mafliet (assuming –
`
`incorrectly – that Malfliet only discloses the face object being 2D) is thus
`
`something the Examiner did not consider. The Board has held that where a
`
`
`
`13
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`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`reference was considered by the Examiner during prosecution, but the Examiner
`
`did not consider whether a feature not found in the prior art reference may been
`
`obvious based on combining the reference with other prior art, the petition should
`
`not be denied under § 325(d). See Edwards Lifesciences Corp. v. Boston Scientific
`
`SciMed, Inc., IPR2017-01295, Paper 9 at 26-27 (Oct. 25, 2017). Petitioner thus
`
`respectfully submits that the Board erred in declining to institute the IPR, under
`
`§ 325(d), for this reason also.
`
`C. Malfliet Combined with Wiedmann
`For the same reasons discussed in the previous section, the Examiner did not
`
`consider obviousness based on Malfliet combined with Wiedmann. Furthermore,
`
`Wiedmann was not included in the foreign search report. For that reason, this
`
`combination is even less redundant than any argument that was before the
`
`Examiner.
`
`D. Additional Challenges
`For the same reasons discussed in the previous sections, Petitioner submits
`
`that the Board also erred in declining to institute the IPR, under § 325(d), with
`
`respect to the additional grounds for dependent claims 6, 7 8, 15 and 21.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`reconsider its decision declining to institute trial, under § 325(d), and instead
`
`institute the trial, for the reasons set forth in in the Petition.
`
`
`
`14
`
`
`
`IPR2018-00785
`U.S. Patent No. 9,336,336
`
`Dated: November 2, 2018
`
`Respectfully submitted,
`
`/Matthew B. Lowrie/
`Matthew B. Lowrie
`Reg. No. 38,228
`Counsel for Petitioner
`
`
`
`
`
`15
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`
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`IPR2018-00785
`U.S. Patent No. 9,336,336
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing paper is being
`
`served today, by sending an electronic copy of the document to counsel of record,
`
`Todd R. Walters (Reg. No. 34,040) (todd.walters@bipc.com) and Roger H. Lee
`
`(Reg. No. 46,317) (roger.lee@bipc.com), Buchanan, Ingersoll & Rooney PC, 1737
`
`King Street, Suite 500, Alexandria, Virginia 22314.
`
`
`
`Dated: November 2, 2018
`
`
`
`/Matthew B. Lowrie/
`Matthew B. Lowrie
`Reg. No. 38,228
`Counsel for Petitioner
`
`
`
`16
`
`
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