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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.
`Petitioner,
`v.
`3SHAPE A/S,
`Patent Owner.
`
`
`Patent No. 9,336,336
`Issue Date: May 10, 2016
`Title: 2D IMAGE ARRANGEMENT
`
`
`
`Inter Partes Review No. IPR2018-00788
`
`
`SUPPLEMENTAL DECLARATION OF JOSEPH L. MUNDY, Ph.D.
`
`exocad Ex. 1015
`exocad v. 3Shape, IPR2018-00788
`
`Page 1 of 5
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.
`Petitioner,
`v.
`3SHAPE A/S,
`Patent Owner.
`
`
`Patent No. 9,336,336
`Issue Date: May 10, 2016
`Title: 2D IMAGE ARRANGEMENT
`
`
`
`Inter Partes Review No. IPR2018-00788
`
`
`SUPPLEMENTAL DECLARATION OF JOSEPH L. MUNDY, Ph.D.
`
`exocad Ex. 1015
`exocad v. 3Shape, IPR2018-00788
`
`Page 1 of 5
`
`
`
`1.
`
`I previously prepared a declaration in this inter partes review, which
`
`was submitted as Exhibit 1002. I incorporate that declaration into this one.
`
`2.
`
`I have reviewed the Board’s Decision [Granting] Institution of Inter
`
`Partes Review, Paper 7, dated October 3, 2018 (the “Decision” or “Paper 7”). In
`
`the portion of the Decision addressing anticipation by Wiedmann (Ex. 1007) and
`
`obviousness based on Wiedmann and Sachdeva (Ex. 1005), the Board found that
`
`Wiedmann does not disclose that the 3D model in Wiedmann is of “at least part of
`
`an oral cavity of the patient” because it is from a database rather than the patient’s
`
`pre-restoration oral cavity. Paper 7 at 31-32. I had construed “3D virtual model of
`
`at least part of an oral cavity of the patient” to mean “a digital representation…
`
`with or without a restoration ….” Ex. 1002 ¶¶ 61-62 (emphasis added). In
`
`Wiedmann, the image taken from a database is of the patient’s cavity post-
`
`restoration. The Board, however, construed the phrase to mean a “pre-restoration”
`
`digital representation. Paper 7 at 9-10.
`
`3. While I understand that the Board has not made its final determination
`
`on claim construction, to the extent this claim construction is ultimately adopted by
`
`the Board, it is my opinion that the combination of Wiedmann and Sachdeva
`
`renders the claim obvious because the only difference with Wiedmann is that the
`
`3D virtual model comes from an image of the patient (as taught in Sachdeva)
`
`rather than a database.
`
`2
`
`exocad Ex. 1015
`exocad v. 3Shape, IPR2018-00788
`
`Page 2 of 5
`
`
`
`4.
`
`Sachdeva meets this claim limitation, as I have previously explained.
`
`Ex. 1002 ¶¶ 319-322.
`
`5.
`
`The source of the 3D model – whether a database or another known
`
`method such as the patient’s pre-existing oral cavity, as in Sachdeva (e.g., Ex.
`
`1005 at 14:20-28, Fig. 6) – does not change the operation of Wiedmann. Both
`
`Wiedmann and Sachdeva describe software that aligns and visualizes a 2D
`
`image(s) with a 3D model(s). That works the same in the software, whether the 3D
`
`model comes from a database or elsewhere. The 3D format of both would be the
`
`same. A POSITA reading Wiedmann would understand that cutting, scaling,
`
`translating, rotating and visualizing the 2D-3D arrangement, and then designing
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`the tooth shape (Ex. 1002 ¶¶ 110, 124, 128-29, 135, 140, 143, 147) is the same,
`
`whether the 3D model is from a database or elsewhere.
`
`6.
`
`A POSITA would have had various reasons to combine Wiedmann
`
`and Sachdeva to allow the 3D model to be from the oral cavity of the patient.
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`Initially, Wiedmann and Sachdeva are in the same field and apply the same
`
`approach of combining 2D images of the patient’s face and 3D dental models
`
`(including teeth) during design and so that the proposed treatment can be seen by a
`
`user before being done. Ex. 1002 ¶ 449.
`
`7. With both Wiedmann and Sachdeva recognizing that visualization is
`
`useful, there are only two options for the 3D dental model – pre-restoration or post-
`
`3
`
`exocad Ex. 1015
`exocad v. 3Shape, IPR2018-00788
`
`Page 3 of 5
`
`
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`restoration. Post-restoration could include using a tooth model from a database,
`
`which would fit the patient, and which may or may not be modified. A second
`
`option is that the 3D model is of the pre-restoration oral cavity of the patient. It is
`
`my opinion that a POSITA would have tried those different design choices,
`
`resulting in this modification to Wiedmann.
`
`8.
`
`A POSITA would have recognized that there are reasons to use a 3D
`
`model of the patient’s pre-restoration oral cavity in Wiedmann. A model from a
`
`database makes sense if all teeth are being replaced. If less than a restoration of all
`
`the anterior teeth is done, such as when a single broken or lost tooth is to be
`
`replaced, using a pre-restoration model may be preferable so that visualization can
`
`be done using the existing teeth that will remain. A POSITA would have realized
`
`that this was a reason to modify Wiedmann in that manner. Since it would require
`
`little to no change in the operation of the software, nor any technical challenge, a
`
`POSITA would have easily expected success.
`
`9.
`
`A POSITA would also have realized that, in the context of
`
`Wiedmann, it was desirable to have as many options as possible for viewing
`
`different types of 2D images and 3D models. Sachdeva teaches this, including use
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`of a 3D model, before, during and after designing restorations, as well as drawing
`
`from a patient image or from a database . Ex. 1002 ¶¶ 326-29 & ¶¶ 332-35 & ¶
`
`453; Ex. 1005 at 18:43-65; 43:52-55; 20:41-45 & 40:34-37; 40:63-66; 50:13-25;
`
`4
`
`exocad Ex. 1015
`exocad v. 3Shape, IPR2018-00788
`
`Page 4 of 5
`
`
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`39:4-6; 39:17-26). Sachdeva provided a reason to add the ability to use a pre-
`
`restoration 3D model of the patient to Wiedmann.
`
`10.
`
`I hereby declare that all statements made herein are of my own
`
`personal knowledge; all statements made on information and belief are believed to
`
`be true; and all statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fined or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed on November 16, 2018 ____________________________
`Joseph L. Mundy, Ph.D
`
`
`5
`
`exocad Ex. 1015
`exocad v. 3Shape, IPR2018-00788
`
`Page 5 of 5
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`
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