throbber
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
`__________________
`
`DECLARATION OF DR. ELI SABER, PH.D.
`
`3SHAPE EXHIBIT 2001
`Exocad v. 3Shape
`IPR2018-00788
`
`

`

`Declaration of Eli Saber, Ph.D.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  QUALIFICATIONS ........................................................................................ 3 
`III.  COMPENSATION AND PRIOR TESTIMONY ........................................... 7 
`IV.  UNDERSTANDING OF THE GOVERNING LAW AND
`PERSPECTIVES APPLIED ............................................................................ 8 
`A. 
`Types of Claims ..................................................................................... 8 
`B.  Unpatentability Based On Anticipation ................................................ 8 
`C.  Unpatentability Based On Obviousness ................................................ 9 
`D. 
`Interpreting Patent Claims in Inter Partes Review Proceedings .......... 9 
`E. 
`Relevant Time Period for Analysis ..................................................... 10 
`F. 
`Bases for My Opinion ......................................................................... 11 
`G.  A Person of Ordinary Skill in the Art (“POSITA”) ............................ 11 
`TECHNICAL BACKGROUND OF THE ’336 PATENT ........................... 11 
`V. 
`VI.  BROADEST REASONABLE CONSTRUCTION OF CLAIM
`TERMS .......................................................................................................... 13 
`A. 
`Construction of “of at least part of an oral cavity of the patient” ....... 13 
`B. 
`Construction of “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” ........................................................................... 15 
`Construction of “render a part of the at least one 2D image that
`includes teeth at least partly or wholly transparent” ........................... 16 
`
`C. 
`
`i
`
`

`

`VII.  THE CLAIMS OF THE ’336 PATENT ARE NEITHER
`ANTICIPATED BY NOR RENDERED OBVIOUS OVER THE
`ART CITED BY PETITIONER .................................................................... 17 
`A.  Wiedmann Does Not Anticipate Claims 1-5, 7-11, 13, 14, 16-
`18, 22-24, and 27-30. (Ground 1) ...................................................... 17 
`Petitioner inappropriately relies on the same “optimum
`1. 
`tooth shape” disclosure of Wiedmann to allegedly satisfy
`two distinct elements recited in the claims. .............................. 17 
`2.  Wiedmann does not disclose a 3D virtual model “of at
`least part of an oral cavity of the patient.” ................................ 21 
`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. ...................... 23 
`4.  Wiedmann does not disclose the claimed feature “remain
`separate representations after being arranged.” ........................ 27 
`Petitioner fails to demonstrate that claims 6-8 are
`anticipated by Wiedmann. ........................................................ 29 
`Claims 1-14, 16-20, and 22-30 Would Not Have Been Obvious
`Over Wiedmann in view of Sachdeva. (Ground 1) ............................ 29 
`There is no reason with rational underpinnings for why a
`1. 
`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. .................. 30 
`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. ................... 31 
`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. ............................... 32 
`
`B. 
`
`5. 
`
`2. 
`
`Declaration of Eli Saber, Ph.D.
`
`
`ii
`
`

`

`3. 
`
`C. 
`
`2. 
`
`b. 
`
`Petitioner’s conclusory assertions are unsupported
`by any credible evidence. ............................................... 33 
`Like Wiedmann, Sachdeva fails to disclose or suggest the
`claimed feature “remain separate representations after
`being arranged.” ........................................................................ 36 
`Sachdeva Does Not Anticipate Claims 1-14, 16-20, and 22-30.
`(Ground 5) ........................................................................................... 36 
`Sachdeva does not disclose that “the at least one 2D
`1. 
`image and the 3D virtual model are aligned…and remain
`separate representations after being arranged.” ........................ 36 
`Contrary to Petitioner’s assertion, Sachdeva
`a. 
`discloses that the morphable model 102 is 3D, not
`2D. ................................................................................... 37 
`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. ......................................................................... 42 
`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.” ................ 50 
`Contrary to Petitioner’s assertion, Sachdeva
`a. 
`explicitly discloses that the morphable face model
`in Fig. 6 includes teeth. ................................................... 50 
`Petitioner does not even allege that a part of the X-
`ray image that includes the teeth in Sachdeva is
`partly or wholly transparent. ........................................... 52 
`The “virtually cut/render transparent” limitation
`requires an active step of causing a part of the 2D
`image to become partly or wholly transparent. .............. 53 
`
`Declaration of Eli Saber, Ph.D.
`
`
`b. 
`
`b. 
`
`c. 
`
`iii
`
`

`

`D. 
`
`b. 
`
`3. 
`
`2. 
`
`Declaration of Eli Saber, Ph.D.
`
`Sachdeva does not anticipate the dependent claims. ................ 54 
`Sachdeva does not anticipate dependent claims 6-
`a. 
`8. ..................................................................................... 54 
`Sachdeva does not anticipate dependent claim 9. .......... 55 
`b. 
`Claims 1-14, 16-20, and 22-30 Would Not Have Been Obvious
`Over Sachdeva in View of Kopelman. (Ground 5) ............................ 55 
`A POSITA would not have combined Sachdeva with
`1. 
`Kopelman as Petitioner alleges. ................................................ 56 
`There is no reason to replace Sachdeva’s 3D
`a. 
`morphable model with a 2D image as Petitioner
`alleges. ............................................................................ 56 
`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. ................................. 58 
`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.” ......... 63 
`Claims 6-8 Would Not Have Been Obvious. (Grounds 4, 8) ............ 64 
`Lehman and Seeger Fail to Cure the Above-Described
`Deficiencies of Wiedmann and Sachdeva. (Grounds 2, 3, 6, 7) ........ 68 
`VIII.  Conclusion ..................................................................................................... 69 
`APPENDIX 1
`
`
`E. 
`F. 
`
`iv
`
`

`

`I, Dr. Eli Saber, Ph.D., hereby state as follows:
`
`Declaration of Eli Saber, Ph.D.
`
`
`I.
`
`INTRODUCTION
`1.
`I have been retained by Buchanan Ingersoll & Rooney PC to provide
`
`technical assistance in the above-captioned matter. I am working as a private
`
`consultant on this matter and the opinions presented here are my own. In
`
`providing my opinions expressed below, I rely upon my education, my experience,
`
`and the documents cited herein.
`
`2.
`
`In preparing this Declaration I have had discussions with counsel. I
`
`reviewed documents, including those referred to below. I provide my opinions and
`
`explanations below. I have reviewed the entirety of this document and do confirm
`
`that the statements herein accurately reflect my understanding and opinions.
`
`3.
`
`I was informed by counsel that this matter is an Inter Partes Review
`
`(“IPR”) of U.S. Patent No. 9,336,336, Case No. IPR2018-00788 (“IPR”) before the
`
`Patent Trial and Appeal Board (“the Board”) of the United States Patent and
`
`Trademark Office “PTO”).
`
`4.
`
`It is my understanding that in this IPR, Exocad GmbH and Exocad
`
`America, Inc. (“Exocad” or “Petitioner”) has filed a Petition (“Pet.”) asking that
`
`the Board find Claims 1-30 of U.S. Patent No. 9,336,336 (“the ’336 Patent”)
`
`(Exhibit 1001) unpatentable for one or more reasons. Counsel has informed me
`
`that the ’336 Patent is owned by 3Shape A/S (“3Shape” or “Patent Owner”).
`
`1
`
`

`

`
`
`5.
`
`In preparing this Declaration, I have reviewed the documents set forth
`
`Declaration of Eli Saber, Ph.D.
`
`in Table 1 below, the Petition, and the Institution Decision dated October 3, 2018
`
`(Paper 7). This Declaration presents the bases and reasons for my opinion,
`
`including the additional materials and information relied upon in forming those
`
`opinions and conclusions.
`
`EXHIBIT
`
`TABLE 1
`
`DESCRIPTION
`
`1001
`
`1002
`
`1003
`
`1005
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1013
`
`2002
`
`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.
`
`U.S. Patent No. 7,156,655 to Sachdeva et al.
`
`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
`
`U.S. Patent No. 7,234,937 to Sachdeva et al.
`
`Curriculum Vitae of Eli Saber, Ph.D.
`
`2
`
`

`

`
`
`EXHIBIT
`
`Declaration of Eli Saber, Ph.D.
`
`TABLE 1
`
`DESCRIPTION
`
`2003
`
`2004
`
`2005
`
`
`
`6.
`
`Blanz et al., A Morphable Model for The Synthesis of 3D Faces,
`Computer Graphics Proceedings SIGGRAPH '99 (August 1999)
`
`The American Heritage College Dictionary, Third Edition, 1997,
`Houghton Mifflin Co., p. 272 (definition of “coincide”)
`
`Hughes, John F., et al., “Computer Graphics: Principles and
`Practice,” 3rd Edition, Addison-Wesley Professional, 2013, pp.
`vii-viii, 1-4, 485-490.
`
`This report is based on information currently available to me. I
`
`reserve the right to continue my investigation and analysis, which may include a
`
`review of documents and information not yet produced. I further reserve the right
`
`to expand or otherwise modify my opinions and conclusions as my investigation
`
`and study continues, and to supplement my opinions and conclusions in response
`
`to any additional information that becomes available to me.
`
`II. QUALIFICATIONS
`7.
`I am a professor in the Electrical and Microelectronic Engineering
`
`Department and the Chester F. Carlson Center for Imaging Science at the
`
`Rochester Institute of Technology (RIT) in Rochester, New York. I also serve as
`
`the Director of the Image, Video and Computer Vision Laboratory. I joined RIT’s
`
`3
`
`

`

`
`full-time faculty in 2004. I have 30 years of industry and academic experience, 25
`
`Declaration of Eli Saber, Ph.D.
`
`of which are in the field of imaging.
`
`8.
`
`I received a Ph.D. in Electrical Engineering from the University of
`
`Rochester in 1996. My concentration was on Signal/Image/Video Processing,
`
`Pattern Recognition, and Computer Vision. I received a Master’s Degree in
`
`Electrical Engineering from the University of Rochester in 1992, and I received a
`
`Bachelor’s Degree in Electrical and Computer Engineering, summa cum laude,
`
`from the State University of New York at Buffalo in 1988.
`
`9.
`
`Before becoming a full-time professor, I worked for Xerox
`
`Corporation for 16 years, from 1988 to 2004. During my years at Xerox, I was
`
`responsible for delivering color management, image processing innovations,
`
`architectures, and algorithms; xerographic sub-systems for a variety of color
`
`products; and control systems for toner production facilities. One of several roles I
`
`held at Xerox was Advanced Development Scientist and Manager. In that capacity,
`
`I established the Advanced Design Laboratory – an Imaging/Xerographics lab –
`
`and provided technical and managerial leadership for the Electrical, Imaging and
`
`Xerographics Department. In another role, as Product Development Scientist and
`
`Manager, I led the research and development of image quality metrics for various
`
`product platforms. I also led the Image Science, Analysis, and Evaluation area,
`
`with 12 to 15 direct reports and a budget of approximately $2 million.
`
`4
`
`

`

`
`
`10. From 1997 until 2004, I was an adjunct faculty member in the
`
`Declaration of Eli Saber, Ph.D.
`
`Electrical Engineering Department of RIT and in the Electrical and Computer
`
`Engineering Department of the University of Rochester. I was responsible for
`
`teaching undergraduate and graduate coursework in signal, image and video
`
`processing; pattern recognition; and communications. Additionally, I performed
`
`research in multimedia applications, pattern recognition, image understanding and
`
`color engineering.
`
`11. Since joining RIT full-time in 2004, I have been responsible for
`
`teaching a variety of undergraduate and graduate courses in digital signal
`
`processing, digital image processing, digital video processing, engineering analysis,
`
`random signal and noise, advanced engineering mathematics, matrix methods,
`
`pattern recognition, communications, modern control theory, and linear systems.
`
`12. My current research focuses on image and video processing for
`
`multimedia, military and biomedical applications, computer vision and three-
`
`dimensional scene reconstruction, and color image processing for printing and
`
`multimedia applications. As a principal investigator or co-principal investigator, I
`
`have acquired research funding in excess of $5 million since joining RIT and have
`
`managed multiple government grants from the Department of Defense as well as
`
`several yearly corporate grants from Hewlett-Packard. In 2012, I was awarded the
`
`5
`
`

`

`
`Prestigious Trustees Scholarship, the highest award at RIT with regard to research
`
`Declaration of Eli Saber, Ph.D.
`
`recognition.
`
`13.
`
`I am the author or co-author of over 30 peer-reviewed journal
`
`publications. These, among others, include:
`
` “Synthesis of Intensity Gradient and Texture Information for Efficient
`
`Three-Dimensional Segmentation of Medical Volumes,” Journal of
`
`Medical Imaging 2, no. 2 (2015):024003-024003;
`
` “Semi-automated System for Three-Dimensional Modeling of Buildings
`
`from Aerial Video,” Journal of Electronic Imaging, Vol. 21(1), 013007,
`
`Jan.-Mar. 2012;
`
` “Automatic Image Segmentation by Dynamic Region Growth and Multi-
`
`Resolution Merging,” IEEE Transactions on Image Processing, Vol. 18,
`
`No. 10, Oct. 2009.
`
` “An Automated Algorithm for the Identification of Artifacts in Mottled
`
`and Noisy Images,” Journal of Electronic Imaging, Vol. 16, No. 3, 2007;
`
` “Partial Shape Recognition by Sub-Matrix Matching for Partial Matching
`
`Guided Image Labeling,” Pattern Recognition, Vol. 38, pp. 1560-1573,
`
`2005; and
`
`6
`
`

`

`
`
`Declaration of Eli Saber, Ph.D.
`
` “Region-Based Affine Shape Matching for Automatic Image Annotation
`
`and Query-by-Example,” Journal of Visual Communication and Image
`
`Representation, March 1997.
`
`14.
`
`I have also authored or co-authored 98 conference and workshop
`
`publications and a book entitled Advanced Linear Algebra for Engineers with
`
`MATLAB, published by CRC Press in February 2009, and am a named inventor
`
`on multiple U.S. and foreign patents.
`
`15.
`
`I am a senior member of the Institute of Electrical and Electronic
`
`Engineers and a member of the IEEE Signal Processing Society, the Electrical
`
`Engineering Honor Society, Eta Kappa Nu.
`
`16. A copy of my curriculum vitae is provided as Exhibit 2002.
`
`III. COMPENSATION AND PRIOR TESTIMONY
`17.
`I am billing at an hourly rate of six hundred dollars ($600) for my
`
`time spent studying materials, working on reports, and participating in depositions.
`
`These rates are my standard rates, regardless of whether my opinions positively or
`
`negatively affect Buchanan Ingersoll & Rooney PC or Petitioners in this matter.
`
`My compensation is not contingent upon the outcome of this matter. I expect to be
`
`reimbursed for reasonable expenses associated with travel, including lodging,
`
`ground transportation, and other expenses incurred in connection with this
`
`engagement.
`
`7
`
`

`

`
`
`18. An updated list of matters in which I have previously testified as an
`
`Declaration of Eli Saber, Ph.D.
`
`expert is provided in Appendix 1.
`
`IV. UNDERSTANDING OF THE GOVERNING LAW AND
`PERSPECTIVES APPLIED
`19.
`I am not an attorney and do not expect to offer any opinions regarding
`
`the law. However, I have been informed of certain legal principles relating to
`
`standards of patentability that I relied on in reaching the opinions set forth in this
`
`report.
`
`A. Types of Claims
`20.
`I understand that there are two types of U.S. patent claims: 1)
`
`independent claims and 2) dependent claims. I understand that independent claims
`
`only include the aspects stated in the independent claim. I further understand that
`
`dependent claims include the aspects stated in that dependent claim, and any other
`
`aspects stated in any claim from which that dependent claim depends.
`
`B. Unpatentability Based On Anticipation
`21.
`I understand that for a claim to be anticipated, each and every claim
`
`element set forth in the claim must be found, either expressly or inherently in a
`
`single prior art reference. In order for there to be anticipation, the identical
`
`invention must be shown in as complete detail as is contained in the claim.
`
`8
`
`

`

`
`
`Declaration of Eli Saber, Ph.D.
`
`C. Unpatentability Based On Obviousness
`22.
`I understand that even if a claim is not anticipated, an invention that
`
`would have been obvious to a person of ordinary skill in the art (“POSITA”) at the
`
`time of the invention is not patentable. I understand that obviousness is
`
`determined by considering several factors, including: the state of the art at the time
`
`the invention was made; the level of ordinary skill in the art; differences between
`
`what is described in the art and the claims at issue; and any objective evidence of
`
`“secondary considerations” relevant to obviousness. Objective evidence relevant
`
`to the issue of obviousness may include evidence of commercial success, long-felt
`
`but unsolved needs, failure of others, copying, and unexpected results. The weight
`
`to be given any objective evidence is made on a case-by-case basis. I understand
`
`that in order for a claimed invention to have been obvious, there must have been a
`
`reason with rational underpinnings to modify or combine references, accompanied
`
`by a reasonable expectation of achieving what is claimed.
`
`D.
`23.
`
`Interpreting Patent Claims in Inter Partes Review Proceedings
`I understand that “inter partes review” is a proceeding before the
`
`United States Patent & Trademark Office (“Patent Office”) for evaluating the
`
`unpatentability of an issued patent claim. Counsel has informed me that claims in
`
`an inter partes review are given their broadest reasonable interpretation that is
`
`consistent with the patent specification. I understand that a patent’s “specification”
`
`9
`
`

`

`
`includes all the figures, discussion, and claims within the patent document. I
`
`Declaration of Eli Saber, Ph.D.
`
`understand that the Patent Office will look to the specification to see if there is a
`
`definition for a claim term, and if not, will apply the broadest reasonable ordinary
`
`meaning from the perspective of a person of ordinary skill in the art. However, I
`
`also understand that if a term has no accepted meaning to those of ordinary skill in
`
`the prior art, its meaning, then, must be found in the patent. I present a more
`
`detailed explanation of certain of the terms in the ’336 patent in the section entitled
`
`“Broadest Reasonable Construction of Claim Terms” below.
`
`E. Relevant Time Period for Analysis
`24.
`I understand that the ’336 patent claims the benefit of earlier filed
`
`provisional applications and foreign applications. The earliest filing date of these
`
`applications to which the ’336 patent claims priority is June 29, 2010, and I have
`
`assumed this is the ’336 patent’s invention date. I have therefore analyzed the
`
`knowledge of a person of ordinary skill in the art as of that day or somewhat before.
`
`Thus, my statements in this declaration are given from the perspective of a person
`
`of ordinary skill in the art during this relevant time period for analysis, unless
`
`otherwise specifically indicated. This is true even if my statements are given in the
`
`present tense.
`
`10
`
`

`

`
`
`Declaration of Eli Saber, Ph.D.
`
`F.
`25.
`
`Bases for My Opinion
`In forming my opinion, I have relied on the ’336 patent claims,
`
`the ’336 patent specification, the exhibits listed in the Exhibit List at paragraph 5
`
`of this Declaration, the Petition (“Pet.”), the Institution Decision (“ID”) dated
`
`October 3, 2018 (Paper 7), and my own experience and expertise of the knowledge
`
`of the person of ordinary skill in the relevant art in the relevant timeframe.
`
`G. A Person of Ordinary Skill in the Art (“POSITA”)
`26.
`It is my understanding that the claims and specification of a patent
`
`must be read and construed through the eyes of a person of ordinary skill in the art
`
`at the time of the alleged invention. With respect to the ’336 patent, it is my
`
`opinion that 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.
`
`V. TECHNICAL BACKGROUND OF THE ’336 PATENT
`27. 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
`
`11
`
`

`

`
`to methods of designing a dental restoration for a patient. Id. at 2:15-29. Dental
`
`Declaration of Eli Saber, Ph.D.
`
`restorations include, for example, crowns, bridges, abutments, or implants. Id. at
`
`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.
`
`28. 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
`
`12
`
`

`

`Declaration of Eli Saber, Ph.D.
`
`
`
`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,
`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.]”)
`
`VI. BROADEST REASONABLE CONSTRUCTION OF CLAIM TERMS
`29. As noted above, I understand that claims in an inter partes review are
`
`given their broadest reasonable interpretation that is consistent with the patent
`
`specification, and the understanding of one of skill in the art (as I defined above).
`
`In this regard, counsel asked me to provide certain information to assist in
`
`determining the legal scope of certain of the ’336 Patent’s terms, which I provide
`
`below. In the absence of a specific further explanation in this declaration of any
`
`term found in any of claims 1-30, I presumed the term to take on its broadest
`
`ordinary meaning to a POSITA.
`
`A. Construction of “of at least part of an oral cavity of the patient”
`30.
`I understand that 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
`
`13
`
`

`

`
`least part of an oral cavity of the patient with or without a restoration, stored in
`
`Declaration of Eli Saber, Ph.D.
`
`three-dimensional format (such as texture and other values for [x, y, z]
`
`coordinates).” Pet. at 8. I understand that 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). I understand that 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 oral cavity of the patient
`
`that is provided prior to designing the recited restoration.”
`
`14
`
`

`

`
`
`Declaration of Eli Saber, Ph.D.
`
`B. Construction of “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”
`I understand that Petitioner asserts that the term “remain separate
`
`31.
`
`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 enough for
`
`15
`
`

`

`
`the 2D image and the 3D virtual model to remain in their respective formats, as
`
`Declaration of Eli Saber, Ph.D.
`
`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
`
`C. Construction of “render a part of the at least one 2D image that
`includes teeth at least partly or wholly transparent”
`I understand that Petitioner did not expressly construe this term. The
`
`32.
`
`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
`
`
`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.
`
`16
`
`

`

`
`image “has been made partially transparent” using a “scale on the menu…to adjust
`
`Declaration of Eli Saber, Ph.D.
`
`the transparency”), 24:38-40.
`
`VII. THE CLAIMS OF THE ’336 PATENT ARE NEITHER
`ANTICIPATED BY NOR RENDERED OBVIOUS OVER THE ART
`CITED BY PETITIONER
`33. For the reasons discussed below, it is my opinion that the applied
`
`documents do not disclose or suggest all of the claimed features. It is my opinion
`
`that there is no reasoning based on rational underpinnings for why a person of
`
`ordinary skill in the art (“POSITA”) would have modified or combined the
`
`references to arrive at the claimed invention. It is my opinion that the claims of
`
`the ’336 Patent are neither anticipated by nor rendered obvious over the documents
`
`cited by the Petitioner.
`
`A. Wiedmann Does Not Anticipate Claims 1-5, 7-11, 13, 14, 16-18,
`22-24, and 27-30. (Ground 1)
`In my opinion,Wiedmann does not disclose each feature recited in
`
`34.
`
`independent claims 1 an

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket