Filed on behalf of Patent Owner 3Shape A/S
`By: Todd R. Walters, Esq.
`
`Roger H. Lee, Esq.
`Mythili Markowski, Ph.D., Esq.
`BUCHANAN INGERSOLL & ROONEY PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314
`Main Telephone (703) 836-6620
`Main Facsimile (703) 836-2021
`todd.walters@bipc.com
`roger.lee@bipc.com
`mythili.markowski@bipc.com
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`EXOCAD GMBH and EXOCAD AMERICA, INC.
`Petitioners
`
`v.
`
`3SHAPE A/S
`Patent Owner
`
`__________________
`
`Case No. IPR2018-00788
`Patent 9,336,336
`__________________
`
`PATENT OWNER’S RESPONSE TO THE PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 9,336,336
`
`

`

`Case No. IPR2018-00788
`
`TABLE OF CONTENTS
`
` 
`
` 
`
` 
`
`Page
`
`I.
`INTRODUCTION ........................................................................................... 1 
` 
`II.
`STATEMENT OF RELIEF REQUESTED .................................................... 2 
` 
`  BACKGROUND OF THE ’336 PATENT ..................................................... 2 III.
`
`  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 4 
`IV.
`CLAIM CONSTRUCTION ............................................................................ 4 
`V.
`“of at least part of an oral cavity of the patient” ................................... 5 
`A.
`“arrange the at least one 2D image relative to the 3D virtual
`B.
`model in a virtual 3D space such that the at least one 2D image
`and the 3D virtual model are aligned when viewed from a
`viewpoint and remain separate representations after being
`arranged” ............................................................................................... 6 
`“render a part of the at least one 2D image that includes teeth at
`least partly or wholly transparent” ........................................................ 7 
`  ARGUMENT ................................................................................................... 8 
`  Wiedmann Does Not Anticipate Claims 1-5, 7-11, 13, 14, 16-
`A.
`18, 22-24, and 27-30. (Ground 1) ........................................................ 9 
`1. 
`Petitioner impermissibly relies on the same “optimum
`tooth shape” disclosure of Wiedmann to allegedly satisfy
`two distinct elements recited in the claims. .............................. 10 
`2.  Wiedmann does not disclose a 3D virtual model “of at
`least part of an oral cavity of the patient.” ................................ 14 
`3.  Wiedmann does not disclose that “the 3D virtual model
`and the at least one 2D image are both visualized in the
`3D space” under Petitioner’s own construction. ...................... 15 
`4.  Wiedmann does not disclose the claimed feature “remain
`separate representations after being arranged.” ........................ 19 
`
`C.
`
` 
`
`VI.
`
`i
`
`

`

`B.
`
` 
`
`C.
`
` 
`
`Case No. IPR2018-00788
`
`5. 
`
`2. 
`
`Petitioner fails to demonstrate that claims 6-8 are
`anticipated by Wiedmann. ........................................................ 21 
`Claims 1-14, 16-20, and 22-30 Would Not Have Been Obvious
`Over Wiedmann in view of Sachdeva. (Ground 1) ............................ 22 
`1. 
`Petitioner provides no reason with rational underpinnings
`for why a POSITA would have replaced the optimum
`tooth shape of Wiedmann with a 3D virtual model which
`is of at least part of an original oral cavity of the patient
`that is provided prior to designing the recited restoration. ....... 22 
`There is no reason with rational underpinnings for
`modifying Wiedmann such that the 3D virtual model and
`the 2D image are both visualized in the 3D space. ................... 24 
`a.  Wiedmann’s system already allows the user to
`preview the treatment before the treatment is
`actually done, without any need to modify the
`system to visualize in the 3D space. ............................... 24 
`Petitioner’s conclusory assertions are unsupported
`by any credible evidence and should be given no
`weight. ............................................................................ 25 
`Like Wiedmann, Sachdeva fails to disclose or suggest the
`claimed feature “remain separate representations after
`being arranged.” ........................................................................ 28 
`Sachdeva Does Not Anticipate Claims 1-14, 16-20, and 22-30.
`(Ground 5) ........................................................................................... 28 
`1. 
`Sachdeva does not disclose that “the at least one 2D
`image and the 3D virtual model are aligned…and remain
`separate representations after being arranged.” ........................ 28 
`a. 
`Contrary to Petitioner’s assertion, Sachdeva
`discloses that the morphable model 102 is 3D, not
`2D. ................................................................................... 29 
`
`b. 
`
`3. 
`
`ii
`
`

`

`Case No. IPR2018-00788
`
`b. 
`
`b. 
`
`c. 
`
`2. 
`
`The virtual patient model in Sachdeva is a
`“composite, combined digital representation”—not
`a 2D image and a 3D virtual model that are aligned
`and remain separate representations after being
`arranged. ......................................................................... 34 
`Sachdeva does not disclose “either virtually cut[ting] at
`least a part of teeth out of the at least one 2D image or
`render[ing] a part of the at least one 2D image that
`includes teeth at least partly or wholly transparent.” ................ 42 
`a. 
`Contrary to Petitioner’s assertion, Sachdeva
`explicitly discloses that the morphable face model
`in Fig. 6 includes teeth. ................................................... 42 
`Petitioner does not even allege that a part of the X-
`ray image that includes the teeth in Sachdeva is
`partly or wholly transparent. ........................................... 44 
`The “virtually cut/render transparent” limitation
`requires an active step of causing a part of the 2D
`image to become partly or wholly transparent. .............. 45 
`Sachdeva does not anticipate the dependent claims. ................ 46 
`a. 
`Sachdeva does not anticipate dependent claims 6-
`8. ..................................................................................... 46 
`Sachdeva does not anticipate dependent claim 9. .......... 47 
`b. 
`Claims 1-14, 16-20, and 22-30 Would Not Have Been Obvious
`Over Sachdeva in View of Kopelman. (Ground 5) ............................ 47 
`1. 
`A POSITA would not have combined Sachdeva with
`Kopelman as Petitioner alleges. ................................................ 48 
`a. 
`There is no reason to replace Sachdeva’s 3D
`morphable model with a 2D image as Petitioner
`alleges. ............................................................................ 48 
`
`3. 
`
`D.
`
` 
`
`iii
`
`

`

`Case No. IPR2018-00788
`
`b. 
`
`2. 
`
`E.
`F.
` 
`
`Contrary to the claims which require a 2D image
`and 3D virtual model to be aligned and remain
`separate representations, Kopelman discloses
`combining 2D and 3D image data. ................................. 50 
`Petitioner makes no assertion that it would have been
`obvious to modify Sachdeva to arrive at “either virtually
`cut[ting] at least a part of teeth out of the at least one 2D
`image or render[ing] a part of the at least one 2D image
`that includes teeth at least partly or wholly transparent.” ......... 55 
`Claims 6-8 Would Not Have Been Obvious. (Grounds 4, 8) ............ 56 
`Lehman and Seeger Fail to Cure the Above-Described
`Deficiencies of Wiedmann and Sachdeva. (Grounds 2, 3, 6, 7) ........ 60 
`Petitioner may not use its reply to gap-fill deficiencies in the
`Petition. ................................................................................................ 61 
`  CONCLUSION .............................................................................................. 62 VII.
`
`APPENDIX A - LIST OF EXHIBITS
`CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24
`CERTIFICATE OF FILING AND SERVICE
`
`
` 
`
`G.
`
` 
`
`iv
`
`

`

`Case No. IPR2018-00788
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Becton, Dickinson and Co. v. Tyco Healthcare Gr., LP,
`616 F.3d 1249 (Fed. Cir. 2010) .......................................................................... 13
`CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co.,
`224 F.3d 1308 (Fed. Cir. 2000) .......................................................................... 14
`Continental Can Co. USA v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991) .......................................................................... 20
`Engel Indus., Inc. v. Lockformer Co.,
`96 F.3d 1398 (Fed. Cir. 1996) ............................................................................ 13
`Gaus v. Conair Corp.,
`363 F.3d 1284 (Fed. Cir. 2004) .......................................................................... 13
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................................. 8
`Hopkins Mfg. Corp. v. Cequent Performance Products, Inc.,
`IPR2015-00613, Paper 9 (P.T.A.B. Aug. 7, 2015) ....................................... 13, 14
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ...................................................................... 9, 23
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 9
`Kinetic Technologies, Inc. v. Skyworks Solutions, Inc.,
`IPR2014-00529, Paper 8 (P.T.A.B. Sep. 23, 2014) ............................................ 27
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................................... 8, 9
`In re Merck & Co., Inc.,
`800 F.2d 1091 (Fed. Cir. 1986) ............................................................................ 9
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ............................................................................ 8
`v
`
`

`

`Case No. IPR2018-00788
`
`Richardson v. Suzuki Motor Co.,
`868 F.2d 1226 (Fed. Cir. 1989) ............................................................................ 8
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) .............................................................................. 8
`Verdegaal Bros. v. Union Oil Co. of California,
`814 F.2d 628 (Fed. Cir. 1987) .............................................................................. 8
`Statutes
`35 U.S.C. § 103(a) ..................................................................................................... 8
`35 U.S.C. § 312(a)(3) ............................................................................................... 23
`35 U.S.C. § 316(e) ..................................................................................................... 2
`Rules
`37 C.F.R. § 42.65(a) ..................................................................................... 20, 26, 27
`37 C.F.R. § 42.120 ..................................................................................................... 1
`Other Authorities
`83 Fed. Reg. 51340 (Oct. 11, 2018) ........................................................................... 4
`
`
`vi
`
`

`

`Case No. IPR2018-00788
`
`
`I.
`
`INTRODUCTION
`Patent Owner, 3Shape A/S (“3Shape” or “Patent Owner”), submits this
`
`Patent Owner’s Response to the Petition for Inter Partes Review (“Petition” or
`
`“Pet.”) filed by exocad GmbH and exocad America, Inc. (“Exocad” or
`
`“Petitioner”) on March 15, 2018, against U.S. Patent No. 9,336,336 (Ex.1001, “the
`
`’336 Patent”). The Board issued an Institution Decision (Paper 7) on October 3,
`
`2018 (“Institution Decision” or “ID”). Pursuant to 37 C.F.R. § 42.120 and the
`
`Joint Stipulation and Notice of Stipulation to Change Due Dates submitted
`
`December 10, 2018 (Paper 14), this Patent Owner’s Response is timely filed.
`
`The claims of the ’336 Patent require arranging a 2D image and a 3D virtual
`
`model such that they are aligned when viewed from a viewpoint and remain
`
`separate representations after being arranged. The ’336 Patent explains that this
`
`“aligned” and “separate representations” arrangement is different from prior art
`
`techniques which merged or combined a 2D image and a 3D virtual model into one
`
`composite representation. Sachdeva and Kopelman are directed to such prior art
`
`techniques, which are explicitly excluded from the claims of the ’336 Patent.
`
`Neither reference discloses or suggests the claimed “aligned” and “separate
`
`representations” arrangement. Sachdeva also does not disclose or suggest virtually
`
`cutting a part of teeth out of the 2D image or rendering a part of the 2D image that
`
`includes teeth at least partly or wholly transparent. Wiedmann similarly does not
`
`1
`
`

`

`Case No. IPR2018-00788
`
`disclose or suggest the claimed feature “remain separate representations after being
`
`arranged.” And, as already determined by the Board, Wiedmann does not disclose
`
`or suggest providing a 3D virtual model of at least part of an oral cavity of the
`
`patient, and Sachdeva does not cure this deficiency. Further, Wiedmann pertains
`
`to 2D visualization and does not disclose or suggest that a 2D image and 3D virtual
`
`model are visualized in the 3D space.
`
`
`II.
`
`STATEMENT OF RELIEF REQUESTED
`As discussed in detail below, Petitioner has not carried its “burden of
`
`proving…unpatentability by a preponderance of the evidence” of any claim of the
`
`’336 Patent. 35 U.S.C. § 316(e). Thus, Patent Owner requests that the Board issue
`
`a final written decision in favor of the Patent Owner, enter judgment against
`
`Petitioner, and terminate this proceeding.
`
`Provided below in Sections III.-VI. is a full statement of the reasons for the
`
`relief requested. Submitted herewith is a Declaration (Ex.2001) and Curriculum
`
`Vitae (Ex.2002) of Dr. Eli Saber.
`
` BACKGROUND OF THE ’336 PATENT
`III.
`The ’336 Patent generally relates to visualizing and modeling a set of teeth
`
`for a patient. Ex.1001 at 1:5-6. Embodiments of the ’336 Patent are directed to
`
`methods of designing a dental restoration for a patient. Id. at 2:15-29. Dental
`
`restorations include, for example, crowns, bridges, abutments, or implants. Id. at
`
`2
`
`

`

`Case No. IPR2018-00788
`
`1:15-16. The ’336 Patent states that “[a]ccuracy requirements for the dental
`
`restorations are very high[,] otherwise the dental restoration will not be visual[ly]
`
`appealing, fit onto the teeth, could cause pain or cause infections.” Id. at 1:46-49.
`
`Ex.2001 at ¶27.
`
`The ’336 Patent discloses providing one or more 2D images where at least
`
`one 2D image comprises at least one facial feature, providing a 3D virtual model of
`
`at least part of the patient’s oral cavity, and arranging at least one of the one or
`
`more 2D images relative to the 3D virtual model such that the 2D image and the
`
`3D virtual model are aligned when viewed from a viewpoint, and are both
`
`visualized in the 3D space. Id. at 2:15-25. The 2D image and 3D virtual model
`
`remain separate representations after being arranged. Id. at 26:15-16. The ’336
`
`Patent distinguishes its technique from prior art techniques in which the 2D image
`
`and 3D model are merged or combined into one composite representation:
`
`Furthermore, it is an advantage that the 2D image and the 3D model
`are arranged and remain as separate data representations which are not
`merged or fused together into one representation. By keeping the data
`representations as separate representations, time is saved and data
`processing time and capacity is reduced. Thus the 2D image is not
`superimposed or overlaid onto the 3D virtual model for creating one
`representation with all data included. Prior art documents describe
`that the data from e.g. a color image is added to the 3D model, such
`that the color content from the image is transferred to the 3D model,
`
`3
`
`

`

`Case No. IPR2018-00788
`
`whereby the result is one representation, i.e. the 3D model including
`color. Creating such models requires more time and exhaustive data
`processing.
`
`Id. at 3:25-37. See also id. at 3:61-65 (“the operator can perform the modeling
`
`based on the simultaneous view of the 2D image and the 3D model instead of
`
`based on either one combined representation or separate views of the 2D image
`
`and/or the 3D model. [Emphasis added.]”). Ex.2001 at ¶28.
`
`IV.
`
` LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSITA”) would have a bachelor’s
`
`degree in electrical engineering, computer engineering, computer science, or an
`
`equivalent field, as well as at least one or two years of industry or research
`
`experience with computer vision/graphics making use of three-dimensional virtual
`
`models. Such a person would also typically have the ability to learn information
`
`about the needs of the users of dental or biomedical design software. Ex.2001 at
`
`¶26.
`
`V.
`
` CLAIM CONSTRUCTION
`The claim terms of the ’336 Patent are to be interpreted according to their
`
`broadest reasonable interpretation (“BRI”) in light of the specification. 83 Fed.
`
`Reg. 51340 (Oct. 11, 2018).
`
`4
`
`

`

`Case No. IPR2018-00788
`
`A.
`
`
`
`“of at least part of an oral cavity of the patient”
`
`Petitioner asserts that the term “3D virtual model of at least part of an oral
`
`cavity of the patient” 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 other values for [x, y, z] coordinates).” Pet. at 8. In its
`
`proposed construction, Petitioner merely repeats the claim language “of at least
`
`part of an oral cavity of the patient.” Id. Petitioner’s proposed construction does
`
`not provide any meaningful interpretation of the phrase “of at least part of an oral
`
`cavity of the patient.” The 3D virtual model of the patient’s oral cavity is a 3D
`
`virtual model of the original oral cavity of the patient that is provided prior to
`
`designing the recited restoration. This construction is consistent with the
`
`specification. See, e.g., Ex.1001 at 2:48-52, 10:48-53 (discussing original oral
`
`cavity of patient or parts thereof that are provided prior to designing the recited
`
`restoration). In fact, Petitioner concedes that “the virtual model is provided and,
`
`after this (due to antecedent basis), ‘design[ing] a restoration for the 3D virtual
`
`model” occurs. Pet. at 9:1-3 (emphasis added). Thus, the plain language of the
`
`claims also demonstrates that “provid[ing] a 3D virtual model of at least part of an
`
`oral cavity of the patient” occurs prior to designing the recited restoration, and the
`
`3D virtual model is of the original oral cavity of the patient. Thus, the phrase “of
`
`at least part of an oral cavity of the patient” means “of at least part of an original
`
`5
`
`

`

`Case No. IPR2018-00788
`
`oral cavity of the patient that is provided prior to designing the recited restoration.”
`
`Ex.2001 at ¶30.
`
`B.
`
`
`
`“arrange the at least one 2D image relative to the 3D virtual
`model in a virtual 3D space such that the at least one 2D image
`and the 3D virtual model are aligned when viewed from a
`viewpoint and remain separate representations after being
`arranged”
`
`Petitioner asserts that the term “remain separate representations after being
`
`arranged” recited in claims 1 and 29 means “the 2D image and the 3D virtual
`
`model remain in their respective formats and are not merged into a single
`
`representation.” Pet. at 9. However, Petitioner’s proposed construction does not
`
`take into account the meaning of “remain separate representations after being
`
`arranged” when read in the context of the “arrange” limitation as a whole:
`
`arrange the at least one 2D image relative to the 3D virtual model in a
`virtual 3D space such that the at least one 2D image and the 3D
`virtual model are aligned when viewed from a viewpoint and
`remain separate representations after being arranged… [Emphasis
`added.]
`
`Ex.1001 at 26:12-16; see also id. at 28:28-32. By reciting “such that”, the
`
`“arrange” limitation requires an arrangement of the 2D image and the 3D virtual
`
`model in which both: (1) the 2D image and the 3D virtual model are aligned when
`
`viewed from a viewpoint and (2) the 2D image and the 3D virtual model remain
`
`separate representations after being arranged, i.e., in the aligned state. It is not
`
`6
`
`

`

`Case No. IPR2018-00788
`
`enough for the 2D image and the 3D virtual model to remain in their respective
`
`formats, as Petitioner alleges; the 2D image and the 3D virtual model must remain
`
`separate in their respective formats (i.e., as separate representations) after being
`
`arranged (after the 2D image and the 3D virtual model are aligned when viewed
`
`from a viewpoint).1 Ex.2001 at ¶31.
`
`C.
`
`
`
`“render a part of the at least one 2D image that includes teeth at
`least partly or wholly transparent”
`
`Petitioner did not expressly construe this term. The term “render a part of
`
`the at least one 2D image that includes teeth at least partly or wholly transparent”
`
`(Ex.1001 at 26:7-9, 28:23-25) requires a part of the 2D image that includes teeth to
`
`be rendered at least partly or wholly transparent. Additionally, “render” is a verb
`
`in this recitation. This term requires the active step of making (i.e., modifying) a
`
`part of at least one 2D image that includes teeth to become at least partly or wholly
`
`transparent. This construction is consistent with the specification, which discloses
`
`that the teeth in the 2D image are “made transparent…by selecting some pixels to
`
`be viewed and selecting other pixels not to be viewed.” Ex.1001 at 9:56-63
`
`(emphasis added); see also id. at 24:32-37 (2D image “has been made partially
`
`
`1 The claims also specify that the 2D image and 3D virtual model are both
`
`visualized in the 3D space. Ex.1001 at 26:17-18, 28:32-34.
`
`7
`
`

`

`Case No. IPR2018-00788
`
`transparent” using a “scale on the menu…to adjust the transparency”), 24:38-40.
`
`Ex.2001 at ¶32.
`
`VI.
`
` ARGUMENT
`“A claim is anticipated only if each and every element as set forth in the
`
`claim is found, either expressly or inherently described, in a single prior art
`
`reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
`
`(Fed. Cir. 1987); see also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
`
`(Fed. Cir. 2008). For anticipation to exist, “[t]he identical invention must be
`
`shown in as complete detail as is contained in the…claim.” Richardson v. Suzuki
`
`Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). “Inherency, however, may not
`
`be established by probabilities or possibilities. The mere fact that a certain thing
`
`may result from a given set of circumstances is not sufficient.” In re Robertson,
`
`169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
`
`To establish obviousness of a claimed invention under 35 U.S.C. § 103(a),
`
`Petitioner must establish that “the differences between the subject matter sought to
`
`be patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person of ordinary skill in the
`
`art to which the subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 406 (2007) (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1
`
`(1966)). A patent claim composed of several elements is not proved obvious
`
`8
`
`

`

`Case No. IPR2018-00788
`
`merely by demonstrating that each of its elements was known, independently, in
`
`the prior art. See KSR, 550 U.S. at 418. Further, “one must have a motivation to
`
`combine accompanied by a reasonable expectation of achieving what is claimed in
`
`the patent-at-issue.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821
`
`F.3d 1359, 1367 (Fed. Cir. 2016); see also In re Merck & Co., Inc., 800 F.2d 1091
`
`(Fed. Cir. 1986). “[R]ejections on obviousness grounds cannot be sustained by
`
`mere conclusory statements; instead, there must be some articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness.” In re
`
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR, 550 U.S. at 418.
`
`For the reasons discussed below, Petitioner fails to satisfy its burden with
`
`respect to all of the grounds (i.e., Grounds 1 to 8) set forth in the Petition.
`
`Petitioner fails to demonstrate that the applied documents disclose or suggest all of
`
`the claimed features, much less provide articulated reasoning based on rational
`
`underpinnings for why a POSITA would have modified the references to arrive at
`
`the claimed invention. Ex.2001 at ¶33.
`
`A.
`
` Wiedmann Does Not Anticipate Claims 1-5, 7-11, 13, 14, 16-18,
`22-24, and 27-30. (Ground 1)
`
`Wiedmann does not disclose each feature recited in independent claims 1
`
`and 29. Thus, Petitioner fails to demonstrate that claims 1 and 29, and any of the
`
`claims depending therefrom, are anticipated by Wiedmann. Ex.2001 at ¶34.
`
`9
`
`

`

`Case No. IPR2018-00788
`
`1.
`
`Petitioner impermissibly relies on the same “optimum tooth
`shape” disclosure of Wiedmann to allegedly satisfy two
`distinct elements recited in the claims.
`In the claims of the ’336 Patent, the recited “3D virtual model” is a distinct
`
`element from the recited “restoration.” In this regard, claims 1 and 29 require
`
`“provid[ing] a 3D virtual model of at least part of an oral cavity of the patient.”
`
`Ex.1001 at 26:10-11, 28:26-27. Such claims also require “design[ing] a
`
`restoration for the 3D virtual model.” Id. at 26:19-21, 28:35-37. Thus, claims 1
`
`and 29 both require a “3D virtual model” and a “restoration” that is designed for
`
`the 3D virtual model. Id. The recited 3D virtual model and the recited restoration
`
`are distinct elements in the claimed method and system. This is apparent from the
`
`plain language of the claims, which recite that the restoration is designed for the
`
`3D virtual model. Id. Ex.2001 at ¶35.
`
`That the recited 3D virtual model and the recited restoration are distinct
`
`elements is also apparent from Fig. 1 of the ’336 Patent, which depicts a flowchart
`
`of a method of designing a dental restoration for a patient:
`
`10
`
`

`

`Case No. IPR2018-00788
`
`
`
`Fig. 1 of the ’336 Patent
`
`Ex.1001 at 19:46-47, Fig. 1. In Step 101, one or more 2D digital images are
`
`provided, where at least one 2D image comprises at least one facial feature. Id. at
`
`19:48-50. In Step 102, a 3D virtual model of the patient’s oral cavity comprising
`
`the patient’s set of teeth, if there are any teeth, is provided. Id. at 19:55-57. In
`
`Step 103, a 2D digital image is arranged or positioned relative to the 3D virtual
`
`model for visualizing the 3D virtual model relative to the 2D digital image. Id. at
`
`19:65-67. In Step 104, a restoration of the 3D virtual model is modeled, where the
`
`restoration is designed to fit the facial feature of the at least one 2D image. Id. at
`
`20:17-19. It is apparent in view of the specification of the ’336 Patent that the
`
`11
`
`

`

`recited 3D virtual model and the recited restoration are distinct elements. Ex.2001
`
`Case No. IPR2018-00788
`
`at ¶36.
`
`Petitioner alleges that the claimed 3D virtual model is satisfied by
`
`Wiedmann’s disclosure of a model of a tooth shape:
`
`Models of “tooth shapes” are “displayed on the screen as a three-
`dimensional representation (Figures 5 and 6).” Ex. 1007 at 21, col. 2
`& Figs. 5 & 6.
`
`Pet. at 23 (Element 1.5 / 29.4) (emphasis in original). Similarly, Petitioner alleges
`
`that the claimed restoration is satisfied by Wiedmann’s disclosure of an optimum
`
`tooth shape:
`
`Wiedmann provides that “[b]ased on this information, the DRS
`calculates the optimum tooth shape for the patient.” Ex. 1007, p. 21,
`col. 2.
`
`Pet. at 31-32 (Element 1.10 / 29.9). Petitioner relies on the same “optimum tooth
`
`shape” disclosed by Wiedmann to satisfy both the claimed 3D virtual model and
`
`the claimed restoration. Petitioner cites the same disclosure (“p. 21, col. 2”) and
`
`the same feature (“[m]odels of ‘tooth shapes’”/“optimum tooth shape”) as
`
`satisfying both the claimed 3D virtual model and the claimed restoration. Pet. at
`
`23, 31-32. Figs. 5 and 6 of Wiedmann depict such “optimum tooth shape.”
`
`Ex.1007 at 0006. However, as explained above, the clear implication from the
`
`claims is that the claimed 3D virtual model and the claimed restoration are distinct
`
`12
`
`

`

`Case No. IPR2018-00788
`
`claim elements. Ex.1001 at 26:19 (“design a restoration for the 3D virtual model”).
`
`Petitioner and its expert make no assertion that the claimed 3D virtual model and
`
`the claimed restoration are somehow satisfied by distinct elements of Wiedmann’s
`
`system. Ex.2001 at ¶37.
`
`
`
`It is impermissible for Petitioner to rely on the same “optimum tooth shape”
`
`element of the Wiedmann system to satisfy both the claimed “3D virtual model”
`
`element and the claimed “restoration” element which, as explained above, the
`
`claims and the specification make clear are distinct elements. See, e.g., Becton,
`
`Dickinson and Co. v. Tyco Healthcare Gr., LP, 616 F.3d 1249, 1254 (Fed. Cir.
`
`2010) (“Where a claim lists elements separately, ‘the clear implication of the claim
`
`language’ is that those elements are ‘distinct component[s]’ of the patented
`
`invention.”), quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004);
`
`see also Hopkins Mfg. Corp. v. Cequent Performance Products, Inc., IPR2015-
`
`00613, Paper 9 at 11-12 (P.T.A.B. Aug. 7, 2015) (rejecting petitioner’s argument
`
`that “a single structure may satisfy two limitations in a claim”). This is particularly
`
`true when, as is the case with the ’336 Patent, the specification confirms that the
`
`claimed “3D virtual model” element and the claimed “restoration” element are in
`
`fact distinct from each other. See, e.g., Engel Indus., Inc. v. Lockformer Co., 96
`
`F.3d 1398, 1404-05 (Fed. Cir. 1996) (where a claim provides for two separate
`
`elements, a “second portion” and a “return portion,” these two elements “logically
`
`13
`
`

`

`Case No. IPR2018-00788
`
`cannot be one and the same”); CAE Screenplates, Inc. v. Heinrich Fiedler GmbH
`
`& Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to
`
`the contrary, we must presume that the use of … different terms in the claims
`
`connotes different meanings.”).
`
` Thus, even under Petitioner’s proposed
`
`constructions, Petitioner has failed to demonstrate that Wiedmann discloses both
`
`the claimed 3D virtual model and the claimed restoration. Ex.2001 at ¶38.
`
`2. Wiedmann does not disclose a 3D virtual model “of at least
`part of an oral cavity of the patient.”
`The Board correctly determined that “Wiedmann does not describe ‘provide
`
`
`
`a 3D virtual model of at least part of an oral cavity of the patient.’” ID at 31. The
`
`Board determined that Wiedmann’s restoration “is not the patient’s existing, or
`
`pre-restoration, oral cavity.” Id. Petitioner asserts that the optimum tooth shape
`
`disclosed by Wiedmann corresponds to the claimed 3D virtual model of at least
`
`part of an oral cavity of the patient. Pet. at 23. However, the optimum tooth shape
`
`disclosed by Wiedmann is not a 3D virtual model “of at least part of an original
`
`oral cavity of the patient that is provided prior to designing the recited restoration.”
`
`See Section V.A. This is because the optimum tooth shape of Wiedmann is an
`
`image set selected from a pre-existing database of around 50 different sets of
`
`anterior teeth. Ex.1007 at 0005 (“In the DRS, a comprehensive selection of around
`
`50 different sets of anterior teeth is stored so that the optimal solution can be found
`
`for every patient”), 0006 (“the DRS calculates the optimum tooth shape for the
`
`14
`
`

`

`Case No. IPR2018-00788
`
`patient…. [T]he search for a suitable match is automatically carried out within the
`
`database of the various tooth shapes stored in the system”). In Wiedmann, the
`
`original oral cavity of the patient is substantially removed (as shown in Fig. 7)
`
`from the 2D face image, and the optimum tooth shape is used to visualize the
`
`replacement, “new restoration” (as shown in Figs. 8-10). The optimum tooth shape,
`
`then, does not correspond to the claimed 3D virtual model which is of at least part
`
`of an original oral cavity of the patient that is provided prior to designing the
`
`recited restoration. See Section V.A. Rather, the optimum tooth shape of
`
`Wiedmann is a restoration that replaces at least a part of the original oral cavity of
`
`a 2D face image. As such, Wiedmann fails to antic