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
`
`NOTICE OF LEAD AND BACKUP COUNSEL ...................................................... 1
`
`NOTICE OF EACH REAL-PARTY-IN-INTEREST ................................................ 1
`
`NOTICE OF RELATED MATTERS ........................................................................ 1
`
`NOTICE OF SERVICE INFORMATION ................................................................. 2
`
`I.
`
`II.
`
`GROUNDS FOR STANDING ........................................................................ 2
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`STATEMENT OF PRECISE RELIEF REQUESTED .................................... 2
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`III. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ................ 3
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`IV. STATEMENT OF REASONS FOR RELIEF REQUESTED ......................... 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`Introduction ........................................................................................... 3
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`The ’336 Patent and Its Claims ............................................................. 4
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`Prosecution of the ’336 Patent .............................................................. 5
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`Person of Ordinary Skill in the Art ....................................................... 7
`
`V.
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`CLAIM CONSTRUCTION ............................................................................ 7
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`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY .................................................................................. 12
`
`A.
`
`[Ground 1] Claims 1-5, 7, 9-11, 13-14, 16-18, 20, 22-24 and
`27-30 Are Anticipated by Wiedmann, or Alternatively
`Rendered Obvious by Wiedmann in view of Sachdeva; Claims
`6, 8, 12, 19, 25 and 26 Are Obvious Based on Wiedmann in
`view of Sachdeva ................................................................................. 12
`
`1.
`
`2.
`
`Overview of Wiedmann ............................................................ 12
`
`Overview of Sachdeva .............................................................. 15
`
`
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`i
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`Independent Claims 1 and 29 .................................................... 16
`3.
`
`4.
`
`5.
`
`6.
`
`Dependent claims 2-14, 16-20, 22-28 and 30 ........................... 33
`
`Rationale to Combine Wiedmann and Sachdeva ...................... 48
`
`Additional Rationale to Combine Wiedmann and
`Sachdeva (Claim 19) ................................................................. 51
`
`[Ground 2] Claim 15 Is Obvious Based on Wiedmann (with or
`without Sachdeva) in view of Lehman ................................................ 51
`
`[Ground 3] Claim 21 Is Obvious Based on Wiedmann (with or
`without Sachdeva) in view of Seeger .................................................. 53
`
`[Ground 4] Claims 6-8 Are Obvious Based on Wiedmann
`Combined with Sachdeva and MacDougald ....................................... 53
`
`[Ground 5] Claims 1-14, 16-20 and 22-30 Are Anticipated by
`Sachdeva, or Alternatively Rendered Obvious by Sachdeva in
`view of Kopelman ............................................................................... 55
`
`1.
`
`2.
`
`3.
`
`4.
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`Overview of Kopelman ............................................................. 55
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`Independent Claims 1 and 29 .................................................... 57
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`Dependent Claims 2-14, 16-20, 22-28 and 30 .......................... 66
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`Rationale to Combine ............................................................... 79
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`[Ground 6] Claim 15 Is Obvious Based on Sachdeva (with or
`without Kopelman) in view of Lehman .............................................. 83
`
`[Ground 7] Claim 21 Is Obvious Based on Sachdeva (with or
`without Kopelman) in view of Seeger ................................................ 83
`
`[Ground 8] Claims 6-8 Are Obvious Based on Sachdeva (with
`or without Kopelman) Combined with MacDougald ......................... 84
`
`B.
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`C.
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`D.
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`E.
`
`F.
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`G.
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`H.
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`ii
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`U.S. Patent No. 9,336,336
`VII. THE PROPOSED GROUNDS ARE NOT REDUNDANT .......................... 84
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`VIII. CONCLUSION .............................................................................................. 85
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`PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103 .................... 86
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`CERTIFICATE OF SERVICE ................................................................................. 87
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`CERTIFICATE OF COMPLIANCE ....................................................................... 88
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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
`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
`U.S. Patent No. 7,234,937 to Sachdeva et al.
`
`1008
`1009
`1010
`
`1011
`1012
`1013
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`
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`iv
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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
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`NOTICE OF EACH REAL-PARTY-IN-INTEREST
`
`The real-parties-in-interest of Petitioner are 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.
`
`
`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
`
`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.
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`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
`
`15
`
`21
`
`6-8
`
`1-14, 16-20,
`22-30
`
`15
`
`21
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`
`
`Description
`Anticipated under § 102 by Wiedmann (only claims
`1-5, 7-11, 13-14, 16-18, 22-24, 27-30), or
`Alternatively Obvious under § 103 over Wiedmann
`and Sachdeva (claims 1-14, 16-20, 22-30)
`Obvious under § 103 based on Wiedmann, Sachdeva
`and Lehman
`Obvious under § 103 based on Wiedmann, Sachdeva
`and Seeger
`Obvious under § 103 based on Wiedmann, Sachdeva
`and MacDougald
`Anticipated under § 102 by Sachdeva, or
`Alternatively Obvious under § 103 over Sachdeva and
`Kopelman
`Obvious under § 103 based on Sacheva, Kopelman
`and Lehman
`Obvious under § 103 based on Sacheva, Kopelman
`
`2
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
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`8
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`6-8
`
`and Seeger
`Obvious under § 103 based on Sacheva, Kopelman
`and MacDougald
`
`
`III. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`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
`
`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
`In general, the ’336 patent (Ex. 1001) claims a method for arranging a 2D
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`image (e.g., of a person’s face) and a 3D model (e.g., of a dental model of the
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`patient’s oral cavity with one or more newly modeled artificial
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`teeth/“restorations”), by moving the 2D image or 3D model relative to each other –
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`so that one can get a sense of what the dental restoration will look like when
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`implanted. Additional elements include that the 2D image includes lips, that (pre-
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`existing) teeth are virtually cut from the 2D image or a portion of the 2D image is
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`rendered transparent or partly transparent (to allow a 3D model with the restoration
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`to be viewed in place of the pre-existing teeth), and that a dental restoration model
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`(for example a model of a tooth replacement) is designed, fitting the lips of the 2D
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`image. Ex. 1001, claim 1.
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`3
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`Similar systems and methods were known in the prior art, as acknowledged
`
`in the patent itself. According to the patent, such systems used 3D models of the
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`dental restoration and those systems may add color data from a color image into
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`the 3D model. Ex. 1001 at 3:33-37. The patent states that it keeps its 2D image
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`and 3D model as “separate data representations” to reduce processing
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`requirements. Id. at 3:28-30 & 3:36-37.
`
`Other prior art shows such systems. For example, a German publication by
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`Oliver Wiedmann, “According to the Laws of Harmony …,” Digital Dental News,
`
`2nd Volume, April 2008 (Ex. 1007), anticipates the independent claims and many
`
`dependent claims. Wiedmann includes photos very plainly showing the cutting of
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`teeth from a 2D image and aligning/visualizing the 2D image with a 3D model.
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`Similarly, another reference, U.S. Patent No. 7,156,655 (“Sachdeva”; Ex.
`
`1005) also describes digital dentistry software with many capabilities, including
`
`those described and claimed in the ’336 patent.
`
`The ’336 Patent and Its Claims
`
`B.
`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
`
`rendering transparent (or partly transparent) some part of the 2D image; (3)
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`4
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`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.
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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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`Prosecution of the ’336 Patent
`
`C.
`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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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`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:
`
`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….
`
`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 a supplemental amendment
`
`dated February 5, 2016, and March 3, 2016, purportedly to “clarify” the claims.
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`Id. at 0884-89 & 0895-900. The amendments added to the independent claim
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`limitations of “cutting of teeth or rendering part of the 2D image transparent or
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`partially transparent” and that the facial feature comprises lips. Id. at 0895 &
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`0899. These limitations were previously in dependent claim 118, which the
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`Examiner had also rejected under Malfliet. Id. at at 0828-29. After the
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`amendment and supplemental amendment were filed, the case was allowed without
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`further comment. Id. at 0907.
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`Person of Ordinary Skill in the Art
`
`D.
`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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`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-
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`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.”
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`7
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`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” in the image (e.g., id. at 11:17-18)
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`and confirms that the 2D image may be a (digital) photograph (e.g., id. at 19:50-
`
`54) or an X-ray (id. at 10:5-6). Finally, the patent describes an embodiment that
`
`also includes use of a 3D model of the face. Looking at the model in two
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`dimensions (i.e., 2D data) 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.
`
`Id. at 10:23-26. The specification describes a 2D image not as the data itself (the
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`projection showing 2D data); rather, the 2D data is converted into a 2D digital
`
`image -- a file with data stored in a two-dimensional format. See generally Ex.
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`1002, ¶¶58-60.
`
`“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
`
`fit the patient” and states that a technician may design/model a restoration on a 3D
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`8
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`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 restoration. A broadest reasonable interpretation includes both. See
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`generally Ex. 1002, ¶¶61-62.
`
`“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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`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
`
`respective formats and are not merged into a single representation.”
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`9
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`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
`
`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.
`
`“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 intentions (and any user of the
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`10
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`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).
`
`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.
`
`
`
`“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
`
`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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`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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`“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.” Ex. 1001 at
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`4:50-52.
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`11
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`VI. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY
`A.
`[Ground 1] Claims 1-5, 7, 9-11, 13-14, 16-18, 20, 22-24 and 27-30
`Are Anticipated by Wiedmann, or Alternatively Rendered Obvious by
`Wiedmann in view of Sachdeva; Claims 6, 8, 12, 19, 25 and 26 Are
`Obvious Based on Wiedmann in view of Sachdeva
`1. Overview of Wiedmann
`Wiedmann (Ex. 1007) was published in April 2008 and qualifies as § 102(b)
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`prior art.
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`Wiedmann discloses a software/computer system called Dental
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`Reconstruction System (“DRS”) for designing a dental restoration. The process
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`begins with two 2D images of the patient’s face (id. Fig. 1):
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`The face is analyzed by the software, which then automatically searches for
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`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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`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
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`the face remains 2D. FIG. 11 shows this to be the case and it is necessarily the
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`case so, for example, the 3D model can be rotated:
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`U.S. Patent No. 9,336,336
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`2. Overview of Sachdeva
`Sachdeva (Ex. 1005) was issued on January 2, 2007 and qualifies as 102(b)
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`prior art.
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`Sachdeva describes a digital dental software system with the ability to view
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`images and dental models in many different ways. It includes obtaining various
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`image data, including “2D color photographs of the face” (Ex. 1005, 6:45-48), to
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`create a model of the patient’s face and aligning it with a 3D tooth model for
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`purposes of designing a restoration.
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`This is shown, for example, in Figure 6:
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`Face image /
`model 102
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`3D tooth
`model 104
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`The teeth in face model 102 have been cut out, as can be seen in the Figure.
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`Sachdeva also provides other tools to render part of it transparent or partly
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`transparent. 15:25-27; 30:8-12.
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`Figure 7 shows how the face model 102 and 3D tooth model 104 are aligned
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`by registering common points on each:
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`3.
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`Independent Claims 1 and 29
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`Claims
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`1. A computer-
`implemented
`method of
`designing a
`dental
`restoration for a
`patient:
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`29. A system for
`designing a
`dental
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`
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`Wiedmann and Sachdeva
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`To the extent that the preambles are viewed as positive
`limitations, each of Wiedmann and Kopelman disclose these
`elements.
`Wiedmann:
`Wiedmann discusses “Dental Reconstruction System” (“DRS”)
`software that “calculates the optimum tooth shape for the
`patient.” Ex. 1007 at 21, col. 2.
`Sachdeva:
`“This invention relates to the field of computerized techniques
`for orthodontic treatment planning of human patients.” Ex.
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`U.S. Patent No. 9,336,336
`restoration for a
`1005 at 1:18–20.
`patient:
`Ex. 1002 ¶¶297-98.
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`
`Claims
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`[1.1] using a
`hardware
`processor;
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`Claims
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`[1.2 / 29.1]
`provide one or
`more 2D
`images, where
`at least one of
`the one of more
`2D images
`comprises at
`least one facial
`feature;
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`
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`Wiedmann and Sachdeva
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`Wiedmann:
`Wiedmann describes “DRS,” which is a computer program,
`which necessarily is executed on a hardware processor. See Ex.
`1007 at 21, col. 2.
`Sachdeva:
`“The overall system 100 includes a general-purpose computer
`system 10 having a processor.” Ex. 1005 at 6:25–26.
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`Ex. 1002 ¶¶299-300.
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`Wiedmann and Sachdeva
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`Wiedmann:
`Figure 1 illustrates that DRS is provided “two digital anterior
`images of the patient’s face.” Ex. 1007 at 20, col. 2.
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`Sachdeva:
`2D images are provided by “2D scanning devices” :
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`U.S. Patent No. 9,336,336
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`Ex. 1005, Fig. 19; see also 19:56-60 (“two dimensional
`images”).
`See also Figure 1 (camera 28 and other images devices 36):
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`Fig. 1; 6:45-47; 6:51-54.
`“Morphable model 102” may be a 2D image. Although
`Sachdeva often refers to the morphable model 102 as 3D, it may
`also be 2D, as Sachdeva indicates elsewhere. 5:3-66 (“create
`two dimensional and/or three-dimensional virtual patient
`model”); 10:9-10 (referring to “morphable face model” without
`characterizing it as 3D); 14:37 (same).
`Indeed, in a related patent, U.S. Patent No. 7,234,937 (Ex.
`1013), which shares most of the same specification, the
`inventors specifically noted that the morphable face model
`could be 2D. Id. at 11:33-38 (“In a less preferred embodiment,
`simple two dimensional data sets could be used, in which the 2
`dimensional data sets are overlapped to create a virtual patient in
`two dimensions. Examples of this might be using x-ray and
`photographs and creating the virtual patient without use of 3D
`data.”); id. claim 32 (“combined digital representation” may be
`2D).
`The 2D images comprise at least one facial feature. 6:41-44
`(“data representing the external visual appearance or surface
`configuration of the face of the patient.”); 7:17-19
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`(“photographic image data of the patient’s face, teeth and
`head”); Fig. 6 (model 102 containing various facial features).
`
`Ex. 1002 ¶301-07.
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`Claims
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`[1.3 / 29.2]
`wherein the at
`least one facial
`feature
`comprises lips;
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`
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`
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`Wiedmann and Sachdeva
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`Wiedmann:
`Figure 1, above, illustrates that the patient’s lips are included in
`the 2D images. Ex. 1007 at 20, Fig. 1. Additionally, with the
`software, “individual facial features are set,” which includes the
`“lip closure line.” Ex. 1007 at 21, col. 1.
`Sachdeva:
`The image data of the patient’s face, mentioned in element 1.2,
`includes the patient’s lips because they are part of the face. Ex.
`1005 at 6:41-44 & 7:17-19.
`Figure 6 includes lips (in red):
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`Ex. 1002 ¶¶308-11.
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`Claims
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`[1.4 / 29.3]
`either virtually
`cut at least a
`part of teeth out
`of the at least
`one 2D image
`or render a part
`of the at least
`one 2D image
`that includes
`teeth at least
`partly or wholly
`transparent;
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`
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`Wiedmann and Sachdeva
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`Wiedmann:
` “[T] he existing restoration is cut out (FIG. 8),” as shown in
`Figures 7-8. Ex. 1007 at 21, col. 2 & Figs. 7&8.
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`
`
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`Part of teeth
`cut out
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`Sachdeva:
`Figure 6 illustrates an image of the patient where the patient’s
`teeth have been cut out (in yellow):
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`U.S. Patent No. 9,336,336
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`Ex. 1005, Fig. 6.
`See also 15:25-27 (“the user is provided with tools that allow the
`user to hide one or more image data in order to study certain
`features”); 30:8-12 (describing “hiding and displaying various
`aspects of the virtual patient model, soft tissue, occlusal plan,
`and other features of the software.”).
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`Fig. 9 and 15:1-24 (transparent 2D X-Ray image):
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`Fig. 8 & 14:53-67 (transparency shown):
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`Ex. 1002 ¶¶312-17.
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`Wiedmann and Sachdeva
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`Wiedmann:
`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.
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`Claims
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`[1.5 / 29.4]
`provide a 3D
`virtual model of
`at least part of
`an oral cavity of
`the patient;
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`Sachdeva:
`“[A] three-dimensional model 104 of teeth of the patient is
`shown on the right hand side of the screen. The 3D model of the
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
`teeth 104 can be obtained from intra-oral scanning using the
`scanner 30 of FIG. 1, from a laser scan of a physical model of
`the dentition obtained from an impression, from a coordinate
`measuring device or some other source. The source is not
`particularly important. The 3D model of the teeth 104 is shown
`in a separate coordinate system X′, Y′, Z′.” Ex. 1005 at 14:20–
`28.
`The 3D model 104 is shown in Figure 6:
`
`
`Fig. 6.
`6:48-50; 7:19-21; 10:11-40.
`Fig. 4 (“3D dental model 70”); 13:20-24 (“…3D model of the
`dentition ….”); Figs. 5A-5E (“3D virtual model of the teeth
`75”); 13:47-50.
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
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`Fig. 5A.
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`Ex. 1002 ¶¶318-22.
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`
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`Wiedmann and Sachdeva
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`Wiedmann:
`Figures 7–10 illustrate that the 2D image (the photograph of the
`face, with the teeth cut out) and the 3D model of teeth are
`arranged relative to one another. Ex. 1007.
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`
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`Claims
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`[1.6 / 29.5]
`arrange the at
`least one 2D
`image relative
`to the 3D virtual
`model in a
`virtual 3D
`space;
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`Petition For Inter Partes Review
`U.S. Patent No. 9,336,336
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`Figure 11 further shows the 2D image is arranged with, but
`separate from, the 3D model:
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`Sachdeva:
`Figure 6 shows a 2D image (the “morphable model 102”)
`26
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`Petition For Inter Pa
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