Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 7
`Entered: October 3, 2018
`
`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.
`
`____________
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 7
`Entered: October 3, 2018
`
`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.
`
`____________
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`IPR2018-00788
`Patent 9,336,336 B2
`
`
`I. INTRODUCTION
`exocad GmbH, and exocad America, Inc. (“Petitioner”) filed a
`Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–30 of
`U.S. Patent No. 9,336,336 B2 (“the ’336 patent”). 3Shape A/S (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Applying
`the standard set forth in 35 U.S.C. § 314(a), which requires demonstrating a
`reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we institute an inter partes review on all grounds and
`claims set forth in the Petition. The Board has not made a final
`determination on the patentability of any claim.
`II. BACKGROUND
`A. The ’336 Patent
`1. Disclosure
`The ’336 patent involves computer-implemented dental restoration
`design. Ex. 1001, 1:5–6 (“a method of visualizing and modeling a set of
`teeth for a patient”). The ’336 patent explains that dental restoration
`modeling combines facial imagery with a 3D model of the patient’s oral
`structure, to thereby allow visualization of the patient’s post-restoration
`appearance. Id. at 19:43–20:29. The 3D model is then usable for
`manufacturing the restoration. Id. at 20:26–29.
`The ’336 patent acknowledges that “[v]isualization and modeling or
`design of teeth [were] known in the field of dental restorations” but
`distinguishes its method because it “may be performed faster than prior art
`methods.” Id. at 1:13–14, 3:38–39. Among the reasons given is that the
`’336 patient’s 2D facial imagery “is not superimposed or overlaid onto the
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`3D virtual model for creating one representation with all data included” as is
`the case in the prior art, which “requires more time and exhaustive data
`processing.” Id. at 3:30–37. In particular, the ’336 patent explains that at
`least one 2D image of the patient’s facial features is arranged relative to the
`3D model in 3D virtual space yet the image and the model “remain as
`separate data representations which are not merged or fused together into
`one representation.” Id. at 3:25–28. Figures 3A and 3B, reproduced below,
`are illustrative.
`
`
`
`Figures 3A and 3B depict visualizing and arranging a 2D image and a
`3D model. The 3D model 302 and the 2D image 301 are depicted separately
`in Figure 3A and depicted aligned in Figure 3B. Id. at 20:54–21:3. The
`’336 patent explains that the teeth of the 2D image may be cut out or
`rendered transparent. Id. at Figs. 8, 11D, 11G, 11H and 23:23–35, 24:31–
`37, 24:60–25:3.
`
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`2. Illustrative Claim
`Of the challenged claims, claims 1 and 29 are independent. Claim 1 is
`illustrative of the claims at issue, and is reproduced below.
`1. A computer-implemented method of designing a dental
`restoration for a patient, wherein the method comprises:
`using a hardware processor to:
`provide one or more 2D images, where at least one
`of the one or more 2D images comprises at least one facial
`feature, wherein the at least one facial feature comprises
`lips;
`
`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;
`provide a 3D virtual model of at least part of an oral
`cavity of the patient;
`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, whereby the 3D
`virtual model and the at least one 2D image are both
`visualized in the 3D space; and
`design a restoration for the 3D virtual model, where
`the restoration is designed to fit the at least one facial
`feature of the at least one 2D image;
`wherein the at least one 2D image and the 3D virtual
`model are aligned by scaling, translating or rotating the at least
`one 2D image or the 3D virtual model relative to each other.
`Ex. 1001, 25:66–26:25.
`
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`B. Evidence and Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–30 are unpatentable based on the
`following grounds (Pet. 2–3):
`
`Ground
`1
`
`Claim(s) Description
`1–14, 16–
`Anticipated under § 102 by Wiedmann1 (claims
`20, and
`1–5, 7–11, 13, 14, 16–18, 22–24, and 27–30),
`22–30
`or Alternatively Obvious under § 103 over
`Wiedmann and Sachdeva2 (claims 1–14, 16–
`20, and 22–30)
`Obvious under § 103 based on Wiedmann,
`Sachdeva, and Lehmann3
`Obvious under § 103 based on Wiedmann,
`Sachdeva, and Seeger4
`Obvious under § 103 based on Wiedmann,
`Sachdeva, and MacDougald5
`Anticipated under § 102 by Sachdeva, or
`Alternatively Obvious under § 103 over
`Sachdeva and Kopelman6
`Obvious under § 103 based on Sachdeva,
`Kopelman, and Lehmann
`
`2
`
`3
`
`4
`
`5
`
`6
`
`15
`
`21
`
`6–8
`
`1–14, 16–
`20, and
`22–30
`15
`
`
`1 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 (Ex. 1007, “Wiedmann”).
`2 U.S. Patent No. 7,156,655 B2 to Sachdeva et al., issued January 2, 2007
`(Ex. 1005, “Sachdeva”).
`3 Lehmann, Thomas M., et al., “Survey: Interpolation Methods in Medical
`Image Processing,” IEEE Transactions on Medical Imaging, Vol. 18,
`No. 11, November 1999 (Ex. 1010, “Lehmann”).
`4 U.S. Patent Publication No. US 2002/0075389 A1 to Seeger, published
`June 20, 2002, (Ex. 1011, “Seeger”).
`5 U.S. Patent No. 6,568,936 B2 to MacDougald, issued May 27, 2003 (Ex.
`1009, “MacDougald”).
`6 U.S. Patent No. 6,845,175 B2 to Kopelman et al., issued January 18, 2005
`(Ex. 1008, “Kopelman”).
`
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`Ground
`7
`
`Claim(s) Description
`21
`Obvious under § 103 based on Sachdeva,
`Kopelman, and Seeger
`Obvious under § 103 based on Sachdeva,
`Kopelman, and MacDougald
`
`6–8
`
`8
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`
`
`Petitioner further relies on the Declaration of its witness, Joseph
`Mundy, Ph.D. Ex. 1002.
`C. Real Parties in Interest
`Petitioner identifies the following parties as real parties in interest:
`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. Pet. 1.7
`Patent Owner identifies only itself as a real party in interest. Paper 3.
`D. Related Proceedings
`The parties state that the ’336 patent is asserted in 3Shape A/S v.
`exocad GmbH, and exocad America, Inc., Case No. 1:17-cv-00239- ER-
`MPT (D. Del.) and that Petitioner has filed another IPR against the ’336
`patent (IPR2018-00785; filed March 15, 2018). Pet. 1; Paper 3, 1.
`
`
`7 Petitioner states “[n]one of the entities other than exocad GmbH and
`exocad America, Inc. meet the definition of a real-party-in-interest, but
`Petitioners nonetheless list those additional entities as real-parties-in-interest
`in this matter.” Pet. 1, n. 1.
`
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`III. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard); Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the broadest reasonable
`construction standard, claim terms are generally given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art at the time of the invention and in the context of the entire disclosure. In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner proposes constructions for “2D image,” “3D virtual model
`of at least part of an oral cavity of the patient,” “virtual 3D space,” “remain
`separate representations after being arranged,” “designed to fit,” “section at
`least two or more teeth,” and “prepared tooth.” Pet. 7–11. Patent Owner
`proposes constructions for “of at least part of an oral cavity of the patient,”
`“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,” and “render a part of the at least one
`2D image that includes teeth at least partly or wholly transparent.” Prelim.
`Resp. 11–16.
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`1. “remain separate representations after being arranged”
`Petitioner contends the term “remain separate representations after
`being arranged” recited in independent 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. 9; see Ex. 1001, 3:25–37 (“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”).
`Patent Owner contends Petitioner’s proposed construction does not
`account for this term in the context of the full claim limitation, which recites
`“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.” Prelim. Resp. 14–15. Patent Owner
`argues that it is not enough to remain separate data representations but that
`“the 2D image and the 3D virtual model must remain separate in their
`respective formats after being arranged (after the 2D image and the 3D
`virtual model are aligned when viewed from a viewpoint).” Id. at 15.
`For purposes of this decision, we adopt Patent Owner’s proposed
`construction. In adopting Patent Owner’s proposed construction, we note
`that our construction does not place a temporal limitation on how long the
`2D image and the 3D virtual model remain separate. This is consistent with
`both the Specification (Ex. 1001, 3:25–37) and the claims (id. at 26:12–18,
`28:28–34), neither of which recite a temporal limitation specifying a length
`of time. Accordingly, this construction does not preclude subsequent
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`merging or fusing together of the separate data representations after
`alignment, provided the 2D image and the 3D model remain separate at least
`momentarily after having been “aligned.”
`
`2. “Virtual 3D Space”
` Petitioner contends that “virtual 3D space” means: “any space shown
`on a screen, in contrast to real-world space, in which a user or program can
`move one or more objects in three dimensions with respect to another
`object.” Pet. 9 (citing Ex. 1001 11:49–55; Ex. 1002 ¶ 63).
`Patent Owner does not argue Petitioner’s construction of “virtual 3D
`space” or provide an alternative construction.
`For purposes of this decision, we adopt Petitioner’s construction of
`the term.
`
`3. “3D virtual model of at least part of an oral cavity of the patient”
`Petitioner contends that “3D virtual model of at least part of an oral
`cavity of the patient” should be construed to mean “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. 8–9. Patent Owner contends that, as used in the
`claims, the term refers to a “pre-restoration” digital representation for which
`a restoration is then designed. Prelim. Resp. 11–14.
`For purposes of this decision, we accept Patent Owner’s construction.
`Based on the record, the claim language of the independent claims and the
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`Specification support Patent Owner’s position. See Ex. 1001, 19:46–20:29,
`25:66–26:25, 28:15–41 and Fig. 1. Patent Owner states that
`like the specification, the plain language of the claims
`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, when read in light of the
`Specification, the phrase “of at least part of an oral cavity of the
`patient” means “of at least part of an original oral cavity of the
`patient that is provided prior to designing the recited restoration.”
`Prelim. Resp. 13.
`
`4. Other Terms
`We do not find it necessary, for purposes of this Decision, to construe
`any other terms explicitly. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
`that are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`
`B. Principles of Law
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference.
`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`Cir. 2001). Although the elements must be arranged or combined in the
`same way as in the claim, “the reference need not satisfy an ipsissimis verbis
`test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
`1331, 1334 (Fed. Cir. 2009) (accord In re Bond, 910 F.2d 831, 832 (Fed.
`Cir. 1990)).
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`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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 having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`C. The Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(quotation and citation omitted). We also are mindful that the level of
`ordinary skill in the art is reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re Oelrich, 579 F.2d 86,
`91 (CCPA 1978).
`Petitioner relies on the testimony of Dr. Joseph L. Mundy, who
`testifies as follows:
`a person of ordinary skill in the art of software systems, including
`digital dental systems, is generally one who has a Bachelor’s
`degree in electrical engineering or computer science, or it could
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`be someone in a related discipline who also has a few years of
`relevant academic, research or industry work experience. Such
`a person would also typically have the ability to learn
`information about the needs of the users of dental design
`software (e.g., dentists, dental lab clinicians, etc.), including such
`information coming from others who have interacted or worked
`with such users of dental design software or have relevant
`experience in the dental design software industry. Often software
`is developed in teams, with not every individual on the team
`being a computer programmer.
`Ex. 1002 ¶ 48. See id. ¶¶ 47–54, Pet. 7.
`Patent Owner does not dispute Dr. Mundy’s description of a person of
`ordinary skill in the art. See generally Prelim. Resp. Accordingly, for
`purposes of this decision, we adopt Petitioner’s proffered level of skill in the
`art.
`
`D. Anticipation under § 102 by Sachdeva
`1. Sachdeva (Ex. 1005)
`Sachdeva discloses “[a] method and workstation for evaluation of an
`orthodontic treatment plan for a patient.” Ex. 1005, Abstract. It discloses
`using two data sets, one of which may be 2D images of the patient’s face
`and head, and the other may be 3D image information of the patient’s teeth.
`Id. at 6:46–50. The first data set is used to create a model of the patient’s
`face, which is aligned in virtual 3D space with a 3D tooth model based on
`the second data set. Id. at 6:14–7:44. This arrangement is then used to
`design a dental restoration for the patient. Id. at 7:45–57. The arrangement
`is depicted in Figure 6, reproduced below.
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`Figure 6 depicts a 3D virtual environment in which a “3D morphable
`model” 102 of the patient’s face is shown in one coordinate system on the
`left side of the display and a 3D model of the patient’s teeth is shown in a
`3D coordinate system on the right side of the screen. Id. at 14:26–31. Icons
`35 “allow the user to position the tooth model 104 relative to the morphable
`model 102 in order to combine the two in a common coordinate system and
`construct a composite model.” Id. Tools allow the user to “hide one or
`more image data in order to study certain features.” Id. at 15:26–27.
`2. Analysis
`Petitioner asserts that Sachdeva discloses each of the features recited
`in claims 1–14, 16–20, and 22–30. In this regard, Petitioner provides
`detailed claim charts mapping the elements of claims 1–14, 16–20, and 22–
`30 to the teachings of Sachdeva and refers to supporting testimony by Dr.
`Mundy. Pet. 57–79 (referencing Pet. 16–48); see Ex. 1002 ¶¶ 466–570.
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`Based on the preliminary record, Petitioner’s position is persuasive as
`discussed below.
`(a) Claims 1 and 29
`With respect to independent claim 1, which is representative of the
`subject matter recited in claim 29, Petitioner asserts, among other things,
`that Sachdeva discloses computerized techniques for orthodontic treatment
`planning of human patients performed by system 100 that includes general
`purpose computer system 10 having a processor. Pet. 16–17 (citing
`Ex. 1005, 1:18–20, 6:25–26). Petitioner argues that Sachdeva provides 2D
`images through “2D scanning devices” and teaches that “Morphable model
`102” may be a 2D image. Pet. 17–20 (citing Ex. 1005, 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)).
`Referring to Figure 6 of Sachdeva, Petitioner further asserts that Sachdeva
`teaches a 3D model of teeth 104 that is arranged in a virtual 3D space
`relative to morphable model 102, and that a user can align and position the
`tooth model 104 relative to the morphable model 102 in order to combine
`the two in a common coordinate system. Pet. 24–30. Petitioner adds that
`Sachdeva teaches that the face image/model and 3D tooth model remain
`separate representations. Pet. 25–31 (citing Ex. 1005, 9:40–48, 14:27–32
`(“allow the user to position the tooth model 104 relative to the morphable
`model 102”), 25:28–45 (“[t]he images can be combined or superimposed”)).
`Patent Owner argues that Sachdeva does not disclose certain features
`of independent claims 1 and 29. Prelim. Resp. 44–55. Patent Owner
`acknowledges that Sachdeva describes “provid[ing] one or more 2D images”
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`including lips, as recited in claims 1 and 29, but contends that “any and all
`acquired 2D image data is combined with 3D image data to provide a single
`combined 3D representation; Sachdeva only ever refers to the morphable
`face model as a single 3D representation.” Prelim. Resp. 45 (citing Ex.
`1005, 7:11–12, 7:13–14, 7:38–39, 7:47–48, 7:55–56 13:15–16). Thus,
`according to Patent Owner, Sachdeva does not describe the subsequent
`limitation in which the 2D image and a 3D virtual model remain separate
`representations after being aligned as recited in claims 1 and 29. Id. at 46.
`Petitioner’s expert testifies otherwise. Ex. 1002 ¶¶ 302–304. In
`contrast to Patent Owner’s contention that “any and all acquired 2D image
`data is combined with 3D image data to provide a single combined 3D
`representation” (Prelim. Resp. 45), Dr. Mundy points out that “Sachdeva
`states explicitly that the virtual patient model itself may be two dimensional,
`which means the ‘morphable model 102’ may also sometimes be two
`dimensional.” Ex. 1002 ¶ 304 (citing Ex. 1005, 5:64–66 (“software features
`that create two dimensional and/or three-dimensional virtual patient model
`on a computer, which can be used for purposes of treatment planning”)). Dr.
`Mundy opines that “the ‘morphable model 102’ is not limited to being 3D in
`Sachdeva.” Id.
`On this record, Dr. Mundy’s testimony is persuasive because it is
`consistent with the disclosure of Sachdeva, which expressly discloses 2D
`virtual models. Accordingly, for purposes of this decision, we are persuaded
`the Petition demonstrates Sachdeva describes the “morphable model 102” is
`not limited to 3D and may be alternatively a 2D image.
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`Patent Owner presents additional arguments that Sachdeva does not
`describe the 2D image and 3D virtual model being aligned while remaining
`separate representations. Prelim. Resp. 46–49. According to Patent Owner,
`although the face model and the tooth model are shown as separate
`representations in Figure 6, once the two are aligned when viewed from a
`viewpoint, “Sachdeva discloses that the 3D tooth model 104 and the 3D face
`model 102 are constructed into a single composite model, and thus do not
`remain as separate representations.” Prelim. Resp. 48 (citing Ex. 1005,
`14:27–32, Fig. 6). Patent Owner dismisses Petitioner’s reliance on Figure 6
`because Petitioner fails to account for the description accompanying Figure
`6, which describes a user “position[ing] the tooth model 104 relative to the
`morphable model 102 in order to combine the two in a common coordinate
`system and construct a composite model.” Ex. 1005, 14:28–31 (emphasis
`added).
`We are not persuaded that Sachdeva’s statement with reference to
`Figure 6 that “construct[ing] a composite model” (Ex. 1005, 14:28–31)
`means that the data sets accompanying the morphable face model and the
`tooth model are merged or fused together as Patent Owner contends (Prelim.
`Resp. 48–52). Dr. Mundy testifies that Sachdeva describes “arrang[ing] 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 when viewed from
`a viewpoint and remain separate representations after being arranged.”
`Ex. 1002 ¶¶ 326–329, 332–335, 337–338. Further, we note that Sachdeva’s
`process provides for both automatic alignment of face and tooth models and
`also for interactive alignment (see, e.g., Ex. 1005, 15:8–9 (“either
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`automatically or using some human interaction”)), which implies that the
`data sets are not merged or fused together, in at least some cases.
`Patent Owner’s contention, on the other hand, is not supported by
`expert testimony, and Patent Owner does not point to any direct statement in
`Sachdeva that describes the respective data sets as being fused or merged.
`We do note, however, both parties will have further opportunities to develop
`the record in trial on this and other issues, including opportunities to cross-
`examine experts.
`Lastly, Patent Owner contends that Petitioner has not shown that
`Sachdeva describes “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,” as required by
`claims 1 and 29. Prelim. Resp. 54–55. Patent Owner contends “Petitioner
`presents no evidence or explanation for how Sachdeva discloses the claimed
`limitation.” Id. at 55. Based on the current record, we find this argument
`unpersuasive.
`Sachdeva discloses that “[o]nce the virtual model is created, the user
`is provided with tools that allow the user to hide one or more image data in
`order to study certain features” and “[t]he screen display 622 includes a
`plurality of icons 624 which are used for hiding and displaying various
`aspects of the virtual patient model, soft tissue, occlusal planes, and other
`features of the software.” Ex. 1005, 15:25–27, 30:8–12. According to Dr.
`Mundy, this “describe[s] how a part of a 2D image can also be rendered
`transparent or partly transparent.” Ex. 1002 ¶ 314.
`
`17
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`IPR2018-00788
`Patent 9,336,336 B2
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`
`On this record, in view of Dr. Mundy’s testimony, we are persuaded
`Sachdeva’s description of hiding image data to study features (see, e.g.,
`15:25–27) includes rendering teeth transparent, which is a sufficient
`description of the limitation. We at least see no reason that Sachdeva’s
`description of hiding image data excludes the image data depicting teeth.
`Patent Owner also argues that “Petitioner attempts to cure the
`deficiencies of Sachdeva by relying on disclosures of U.S. Patent No.
`7,234,937 [Ex. 1013],” which has a similar disclosure to the ’336 patent and
`common inventors. Prelim. Resp. 52–53 (referring to Pet. 19), Ex. 1013.8
`See Pet. 19 (“Indeed, in a related patent, [the ’937 Patent], which shares
`most of the same specification, the inventors specifically noted that the
`morphable face model could be 2D.”); Ex. 1013, 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.”). We understand Petitioner to rely on the disclosure of
`Sachdeva alone for its § 102 challenge and not Sachdeva in combination
`with the ’937 Patent. Accordingly, to whatever extent Petitioner refers to
`the ’937 Patent, we are not persuaded that it is for the purpose of curing the
`deficiencies of Sachdeva, but rather to aid in understanding Sachdeva.
`Accordingly, based on the preliminary record, Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertion that
`independent claims 1 and 29 are anticipated by Sachdeva.
`
`
`8 U.S. Patent No. 7,234,937 B2 to Sachdeva et al., issued June 26, 2007 (Ex.
`1005, “the ’937 Patent”).
`
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`
`(b) Dependent claims 2–14, 16–20, 22–28, and 30
`Patent Owner does not provide arguments separate from those
`discussed with respect to independent claims 1 and 29. Based on the current
`record, for the reasons discussed above, and in view of the detailed claim
`charts, arguments, and supporting evidence provided in the Petition and by
`Petitioner (see, e.g., Pet. 66–79 (referencing Pet. 33–48)), we determine that
`Petitioner has demonstrated a reasonable likelihood of prevailing on its
`assertion that dependent claims 2–14, 16–20, 22–28, and 30 are anticipated
`by Sachdeva.
`
`E. Obviousness under § 103 over Sachdeva and Kopelman
`1. Kopelman (Ex. 1008)
`Kopelman discloses a dental imaging processing method/system that
`is used to design a dental restoration. Ex. 1008, 1:43–60. Kopelman
`discloses taking a 2D image, such as an X-ray (id. at Fig. 1A), and a 3D
`image of the patient’s teeth (id. at Fig. 1B), and combining the 2D and 3D
`images, as shown in Figure 5, reproduced below with annotations from the
`Petition.
`
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`Kopelman Figure 5 with annotations depicting a 2D X-ray image and a 3D
`tooth model as reproduced from the Petition. Pet. 56 (Ex. 1008, Fig. 5).
`
`Petitioner asserts that claims 1–14, 16–20, and 22–30 alternatively
`would have been obvious over the combination of Sachdeva and Kopelman.
`Specifically, Petitioner contends that “if the Board were to accept an
`argument that Sachdeva discloses only a 3D face model and not also 2D face
`image, for the ‘morphable model 102’ [then] . . . it nonetheless would have
`been obvious to combine Sachdeva with Kopelman[’s]” 2D face image.
`Pet. 79. For support, the Petition includes claim charts detailing how claims
`1–14, 16–20, and 22–30 read on the combination of Sachdeva and
`Kopelman, and relies on the testimony of Dr. Mundy. Pet. 57–79; see
`Ex. 1002 ¶¶ 467–568.
`The Petition provides numerous reasons for combining the teachings
`of Sachdeva and Kopelman, which are supported by the testimony of Dr.
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`Mundy. Pet. 79–83; Ex. 1002 ¶¶ 574–80. For example, Dr. Mundy testifies
`that “[t]he teachings of both Sachdeva and Kopelman themselves also would
`have motivated a [person having ordinary skill in the art] to modify
`Sachdeva to include aligning/visualizing 2D images with 3D models.”
`Ex. 1002 ¶ 579. Dr. Mundy explains that because “Sachdeva teaches
`combining other 2D images with 3D tooth models . . . a POSITA would
`have been motivated to also allow the system in Sachdeva to use a
`morphable face model 102 that is 2D.” Id. (citing Ex. 1005, Figs. 5A, 28
`and 13:41–50, 28:59–29:31). He adds that “the teachings of Kopelman,
`which discloses aligning and visualizing a 2D image with a 3D model,
`would also have motivated a POSITA to combine it with Sachdeva.” Id.
`Dr. Mundy states, “Kopelman teaches the benefits of combining a 2D image
`with a 3D tooth model, including describing that it is desirable because it
`allows for better analysis for orthodontic treatment.” Id. (citing Ex. 1008,
`1:52–56).
`In response, Patent Owner contends that, like Sachdeva, Kopelman
`does not disclose that the 2D image and the 3D model “remain separate
`representations after being arranged.” Prelim. Resp. 56–58. Additionally,
`Patent Owner argues that “Petitioner makes no assertion that it would have
`been obvious to modify Sachdeva (alone or in view of Kopelman) to arrive
`at the claimed feature” relating to rendering part of the image, including
`teeth, transparent. Id. at 58–59.
`Petitioner, however, relies on Sachdeva for these features. See Pet. 79
`(relying on Kopelman only for 2D image disclosure and only if Sachdeva
`were found not to disclose this). We disagree with Patent Owner that
`
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`Sachdeva does not teach a 2D face image. Nonetheless, we are persuaded
`that Petitioner has provided sufficient explanation for why a person having
`ordinary skill in the art would modify Sachdeva to include a 2D image. Pet.
`79–83.
`Thus, for the foregoing reasons and those discussed above in § II.B.,
`we conclude that the Petition demonstrates a reasonable likelihood of
`prevailing on its challenge of independent claims 1 and 29 as unpatentable
`for obviousness over Sachdeva and Kopelman.
`Patent Owner does not address the dependent claims of this challenge
`(claims 2–14, 16–20, 22–28, and 30) separately from its arguments directed
`at claims 1 and 29. We have also reviewed the Petition’s analysis for these
`claims and also conclude that it demonstrates a reasonable likelihood of
`prevailing on the challenge of those claims over Sachdeva and Kopelman.
`See Pet. 55–79.
`
`F. Obviousness under § 103 over Sachdeva and Kopelman together with
`Lehmann, Seeger, or MacDougald, respectively
`Petitioner contends that Lehmann in combination with Sachdeva and
`Kopelman renders claim 15 obvious. Pet. 83 (citing Ex. 1010, 3–4 and Fig.
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